Michelin North America, Inc. v. Dana Reason
Claim Number: FA1801001767735
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 Dana Reason (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bfgoodrichpromotions.com>, registered with GoDaddy.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2018; the Forum received payment on January 19, 2018.
On January 22, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bfgoodrichpromotions.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 January 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2018 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@bfgoodrichpromotions.com. Also on January 24, 2018, 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 February 15,2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 its famous BFGOODRICH mark to design, manufacture and market tires for several vehicle industries, and has a business presence in more than 170 countries worldwide supplying a range of thousands of products. Complainant claims rights to its mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,087,694 registered Mar. 21, 1978). See Compl. Annex A. Respondent’s <bfgoodrichpromotions.com> domain name is confusingly similar to Complainant’s BFGOODRICH mark as Respondent appends the generic term “promotions,” and the “.com” generic top-level-domain (“gTLD”) to Complainant’s wholly incorporated mark.
Respondent lacks rights or legitimate interests in the <bfgoodrichpromotions.com> domain name. Respondent is not commonly known by the domain name at issue based on the WHOIS information of record, Respondent’s use of a privacy shield, and Respondent’s lack of authorization to use the BFGOODRICH mark. Additionally, Respondent’s failure to make demonstrable preparations to use the disputed domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compl. Annex E.
Respondent registered and uses the <bfgoodrichpromotions.com> domain name in bad faith. Respondent fails to make an active use of the domain name at issue. Further, Respondent failed to respond to Complainant’s cease and desist letter. Lastly, Respondent must have had actual or constructive knowledge of Complainant’s rights in the BFGOODRICH mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <bfgoodrichpromotions.com> domain name on September 3, 2017.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
The Panel finds that the disputed domain name, <bfgoodrichpromotions.com>, is confusingly similar to Complainant’s valid and subsisting trademark, BFGOODRICH. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding the generic word “promotions” to the trademark and appending the g TLD “.com.” This is inadequate to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no license, right or permission to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent’s lack of use of the disputed domain name does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
Further, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent registered and currently uses the <bfgoodrichpromotions.com> domain name in bad faith as Respondent fails to make an active use of the disputed domain name. The non-exclusive nature of Policy ¶ 4(b) allows for the consideration of additional factors in an analysis for bad faith per Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Bad faith under Policy ¶ 4(a)(iii) can be found where a respondent fails to make an active use of a domain name. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant contends the domain name does not resolve to an active website and has not since September 2017. See Compl. Annex. B, E. The Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Finally, Complainant argues that due to the fame and notoriety of its marks, there is no reason for Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the mark and to perpetrate fraudulent activities. A respondent’s actual knowledge of a mark may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant asserts that its tires, branded with Complainant’s BFGOODRICH mark, are famous to countless customers around the world. The Panel, therefore, finds that Respondent had actual knowledge of Complainant’s rights in the BFGOODRICH mark when it registered <bfgoodrichpromotions.com>, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <bfgoodrichpromotions.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: February 19, 2018
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