Michelin North America, Inc. v. Jim
Seidel
Claim
Number: FA0508000541644
Complainant is Michelin North America, Inc. (“Complainant”),
represented by Neil M. Batavia, of Dority & Manning, Attorneys at Law, P.A., PO Box 1449, Greenville, SC 29602-1449. Respondent is Jim Seidel (“Respondent”), 23009 Norwalk Lane, Fort Mill, South
Carolina 29715.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <michelincartires.com> and <michelintrucktires.com>
registered with Go Daddy Software, 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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 17, 2005.
On
August 16, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <michelincartires.com> and <michelintrucktires.com>
domain names are registered with Go Daddy Software, Inc. and that Respondent is
the current registrant of the names. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
August 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 8, 2005 by which Respondent could file a response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@michelincartires.com and
postmaster@michelintrucktires.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 15, 2005 , pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Louis E. Condon as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <michelincartires.com>
and <michelintrucktires.com> domain names are confusingly
similar to Complainant’s MICHELIN mark.
2. Respondent does not have any rights or
legitimate interests in the <michelincartires.com> and <michelintrucktires.com>
domain names.
3. Respondent registered and used the <michelincartires.com>
and <michelintrucktires.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Michelin North America, Inc., designs, manufacturers and markets tires for
several vehicle industries, and is involved in vehicle racing and rallies. Complainant has a business presence in over
170 countries worldwide, supplies a range of more than 36,000 products, and
produces more than 850,000 tires daily.
Complainant
has registered its MICHELIN mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 892,045, issued June 2, 1970).
Respondent
registered the <michelincartires.com> and <michelintrucktires.com>
domain names on April 18, 2005.
Respondent’s domain names do not resolve to active websites.
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."
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(e), 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.”).
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
asserts that it has established rights in the MICHELIN mark through
registration with the USPTO. See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
Moreover, the <michelincartires.com>
and <michelintrucktires.com> domain names are confusingly
similar to Complainant’s MICHELIN mark because the domain names incorporate
Complainant’s mark in its entirety and merely add the common and descriptive
words “car,” “truck” and “tires.” These
changes are not enough to overcome the confusingly similar aspects of
Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also Westfield Corp. v.
Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element).
Furthermore, the
addition of the top-level domain “.com” is irrelevant in determining whether
the <michelincartires.com> and <michelintrucktires.com>
domain names are confusingly similar to Complainant’s mark. 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"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without legal significance since use
of a gTLD is required of domain name registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent does
not have rights or legitimate interests in the <michelincartires.com> and
<michelintrucktires.com> domain names. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts
to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain names. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent does not have rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights or legitimate
interests in the domain name); see also
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent does not have rights or legitimate interests is
sufficient to shift the burden of proof to the respondent to demonstrate that
such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar.
9, 2000) (finding that by not submitting a response, the respondent has failed
to invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name).
Moreover,
Respondent is not commonly known by the <michelincartires.com> and
<michelintrucktires.com> domain names. Thus, the Panel concludes that Respondent has not established
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interest where respondent was
not commonly known by the mark and never applied for a license or permission
from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb.
Forum Feb. 5, 2001) (finding no rights or legitimate interests because
respondent is not commonly known by the disputed domain name or using the
domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162
(Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or
legitimate interests in domain names because it is not commonly known by the
complainant’s marks and the respondent has not used the domain names in
connection with a bona fide offering
of goods and services or for a legitimate noncommercial or fair use).
Furthermore,
Complainant contends that Respondent is not making any use of the <michelincartires.com>
and <michelintrucktires.com> domain names, as they do not resolve to active websites. Such nonuse cannot be considered a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before
notice of the domain name dispute, the domain name did not resolve to a
website, and the respondent is not commonly known by the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
contends that Respondent registered the <michelincartires.com> and
<michelintrucktires.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii)
because Respondent has not made any use of the disputed domain names since
registering them. Nor has respondent
offered evidence of demonstrable preparations to use. Therefore, the Panel finds that Respondent’s registration of the
disputed domains constitutes bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name
without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the
domain name or website that connects with the domain name, and that passive
holding of a domain name permits an inference of registration and use in bad
faith); see also Telstra Corp. v.
Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible,
in certain circumstances, for inactivity by the Respondent to amount to the
domain name being used in bad faith”).
Furthermore,
Respondent registered the <michelincartires.com> and <michelintrucktires.com>
domain names with constructive knowledge of Complainant’s rights in the
MICHELIN mark due to Complainant’s registration of the mark with the
USPTO. Respondent also had actual
knowledge of Complainant’s rights in the MICHELIN mark due to the advertising
and fame Complainant’s mark has attained.
Registration of a domain name that is confusingly similar to another’s
mark despite actual or constructive knowledge of the mark holder’s rights in
the mark is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when the respondent reasonably
should have been aware of the complainant’s trademarks, actually or
constructively.”); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <michelincartires.com> and <michelintrucktires.com>
domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 28, 2005
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