Michelin North America, Inc. v. Jesse Vaughan
Claim Number: FA1509001639995
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 Jesse Vaughan (“Respondent”), represented by Rachel A. Rice of Modus Law, Ltd., Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <meatfreemichelin.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.
ROBERT T. PFEUFFER, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2015; the Forum received payment on October 1, 2015.
On September 29, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <meatfreemichelin.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 October 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 2015 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@meatfreemichelin.com. Also on October 2, 2015, 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 October 26, 2015.
On November 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed ROBERT T. PFEUFFER, 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
Complainant designs, manufactures and markets tires for several vehicle industries, and is involved in vehicle racing and rallies. Complainant has registered the MICHELIN mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,399,361, registered July 1, 1986), demonstrating rights in the mark. Respondent’s <meatfreemichelin.com> domain name is confusingly similar as it incorporates the mark fully and merely appends the two terms “meat” and “free” as well as the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <meatfreemichelin.com> domain name. Respondent is not commonly known by the<meatfreemichelin.com> name. Further, Respondent is not a licensee of Complainant. Respondent’s <meatfreemichelin.com> domain name resolves to a blog site which utilizes the MICHELIN mark in restaurant reviews, which competes with a travel guide offered by Complainant under the same mark. This interference with Complainant’s business contemplates neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent registered and used the <meatfreemichelin.com> domain name in bad faith as it had actual or at least constructive knowledge of the MICHELIN mark and Complainant’s rights in such a mark.
B. Respondent
The <meatfreemichelin.com> is comprised of generic terms which sufficiently distinguish the disputed domain name from the mark per Policy ¶ 4(a)(i). Complainant has provided insufficient evidence that any of Complainant’s actual goods or services are commonly described as “meat free.”
Respondent has rights and legitimate interests in the disputed <meatfreemichelin.com> domain name. “Meat free” is indeed descriptive of Respondent’s vegetarian cuisine blog. The purpose of the blog associated with the disputed domain name is simply to disseminate information and provide commentary. Therefore, Respondent has utilized the <meatfreemichelin.com> domain name with a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii).
Respondent neither registered nor used the <meatfreemichelin.com> domain name in bad faith. Respondent initially offered to transfer the domain to Complainant’s representative, Mr. Bagarazzi, for free.
No pattern of infringing domain name registrations is evident. Respondent has not been proven to disrupt Complainant’s legitimate business purposes, nor has it attempted to do so through its use of the <meatfreemichelin.com> blog site. Finally, Respondent has not endeavored to commercially gain through its use of the <meatfreemichelin.com> domain name, or from any confusion Internet users may encounter.
Complainant, through initiating this administrative proceeding, has evidenced its desire to reverse domain-name hijack the <meatfreemichelin.com> domain name from Respondent.
(1) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) The domain name has been registered and is being used in bad faith.
Complainant designs, manufactures and markets tires for several vehicle industries, and is involved in vehicle racing and rallies. Complainant has purportedly registered the MICHELIN mark with the likes of the USPTO (e.g., Reg. No. 1,399,361, registered July 1, 1986), and contends that its registrations demonstrate rights in the mark per Policy ¶ 4(a)(i). Panels have agreed unanimously that a trademark registration held in a mark accords Policy ¶ 4(a)(i) rights. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, this Panel finds Complainant has demonstrated satisfactory rights in the MICHELIN mark per Policy ¶ 4(a)(i) through its inclusion of exhibits bearing USPTO registrations for that mark.
Next, Complainant argues that Respondent’s <meatfreemichelin.com> domain name is confusingly similar as it incorporates the mark fully and merely appends the two terms “meat” and “free” as well as the gTLD “.com.” Panels have seen confusing similarity where a complainant’s mark represents the dominant portion of a disputed domain. 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.”). While the MICHELIN mark may be considered to be the “salient feature” of the disputed domain name, this Panel agrees with the reasoning found in Chanel and determines that the disputed domain name is confusingly similar to the MICHELIN mark per Policy ¶ 4(a)(i).
While Respondent contends that the <meatfreemichelin.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel is aware that 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 (Nat. Arb. 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 (Nat. Arb. 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 argues that Respondent has no rights or legitimate interests in the <meatfreemichelin.com> domain name. In arguing this point, Complainant notes that Respondent is not commonly known by the <meatfreemichelin.com> pursuant to the WHOIS information. Further, Respondent is not a licensee of Complainant. The Panel agrees that Respondent is not commonly known by the disputed domain name upon viewing all relevant evidence of record, and finds Respondent has failed to support its rights under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Complainant argues that Respondent’s <meatfreemichelin.com> domain name resolves to a blog site which utilizes the MICHELIN mark in restaurant reviews, which competes with a travel guide offered by Complainant under the same mark. This is alleged by Complainant to constitute interference with Complainant’s business, which contemplates neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). The Panel in the case of Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000), in which the panel found (i) the fact that the complainant has not licensed or otherwise permitted the respondent to use any of its trademarks, and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the complainant, demonstrate that the respondent lacks rights or legitimate interests in the domain name. The Panel finds that Respondent merely utilized Complainant’s MICHELIN mark through its use of the resolving site to create an impression of association with Complainant, thereby competing with Complainant, and it agrees that no rights or legitimate interests exist under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent’s <meatfreemichelin.com> domain name resolves to a blog site which utilizes the MICHELIN mark in restaurant reviews, which competes with a travel guide offered by Complainant under the same mark. This is alleged by Complainant to constitute interference with Complainant’s business, which contemplates neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). The Panel notes the case of Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000), in which the panel found (i) the fact that the complainant has not licensed or otherwise permitted the respondent to use any of its trademarks, and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the complainant, demonstrate that the respondent lacks rights or legitimate interests in the domain name. The Panel agrees that Respondent merely utilized Complainant’s MICHELIN mark through its use of the resolving site to create an impression of association with Complainant, thereby competing with Complainant, it therefore finds that no rights or legitimate interests exist under Policy ¶¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith
While Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. 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).
Complainant asserts that Respondent must have had constructive and/or actual notice of Complainant's rights in the MICHELIN mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the <meatfreemichelin.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").
Reverse Domain Name Hijacking
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), and all of the elements of Policy ¶ 4(a), and the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <meatfreemichelin.com> domain name TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFER, Panelist
Date: November 10, 2015.
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