Michelin North America, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1509001640108
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 Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leguidemicheline.org>, registered with Tld Registrar Solutions Ltd. (R2011-Lror).
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 September 30, 2015; the Forum received payment on October 1, 2015.
On October 1, 2015, Tld Registrar Solutions Ltd. (R2011-Lror) confirmed by e-mail to the Forum that the <leguidemicheline.org> domain name is registered with Tld Registrar Solutions Ltd. (R2011-Lror) and that Respondent is the current registrant of the name. Tld Registrar Solutions Ltd. (R2011-Lror) has verified that Respondent is bound by the Tld Registrar Solutions Ltd. (R2011-Lror) 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 5, 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@leguidemicheline.org. Also on October 5, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2015, 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. 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 states that is holds registration of the mark MICHELIN in the US and elsewhere, with rights dating back to 1927. The mark is used to market a wide range of products, including tires, travel guides, restaurant guides, and maps. Complainant is active in more than 170 countries and its mark is famous around the world. At the turn of the 20th century, Complainant created the MICHELIN Guide, its first travel publication. Since then, hundreds of other travel guides have been developed by Complainant.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s mark as it merely appends the two French words “le,” which in English is the definite article “the;” and “guide,” which has the same meaning in both French and English, and the generic top-level domain (“gTLD”) “.org.” Additionally, Respondent has added the letter “e” to the end of Michelin to yield “micheline,” which is a common misspelling of Complainant’s mark. Complainant cites UDRP precedents to support its position.
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name attempts to take advantage of Complainant’s automotive reputation in selling advertisements to third parties for a various products using in cooking and kitchens, and a car seat that visitors to Respondent’s website might assume was endorsed or approved by Complainant. Complainant cites UDRP precedents to support its position.
Respondent has registered and is using the disputed domain name in bad faith. Based on the fame and goodwill of Complainant’s MICHELIN mark, it is clear that Respondent had actual and/or constructive knowledge of Complainant’s rights in its mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the registered trademark MICHELIN, dating back to at least 1986. This mark is registered in many countries around the world and it is famous.
The disputed domain name was registered in 2015, well after Complainant registered its mark.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to point to web site containing sponsored advertisements to third parties for various products using in cooking and kitchens, and a car seat.
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(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.”).
Complainant has registered the MICHELIN mark with rights dating back to 1986. Complainant’s mark is famous. See Michelin North America, Inc., v. Regstrarads, Inc., FA 1628283 (Nat. Arb. Forum August 24, 2015); see also Michelin North America, Inc., v. Jared Burnup, FA 1623613 (Nat. Arb. Forum July 14, 2015).
The disputed domain name is confusingly similar to Complainant’s mark as it merely appends the two French words “le,” which in English is the definite article “the,” and “guide,” which has the same meaning in both French and English, and the gTLD “.org.” Additionally, Respondent has added the letter “e” to the end of Michelin to yield “micheline,” which is a common misspelling of Complainant’s mark. Previous panels have held a respondent’s disputed domain name to be confusingly similar to a complainant’s mark where the respondent merely added terms that described complainant’s products to the complainant’s mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Michelin North America, Inc. v. Shui Lun Alan Tsang, FA 1406699 (Nat. Arb. Forum Oct. 20, 2011); Compagnie Generale des Etablissements Michelin v. Lisa Katz, D2015-1156 (WIPO Aug. 25, 2015); Michelin North America, Inc. V. Bobbi Goldfinch c/o Goldfinch enterprises, FA 1285536 (Nat. Arb. Forum Nov. 2, 2009). Previous panels have also found confusing similarity between a complainant’s mark and respondent’s disputed domain name where the disputed domain is a simple misspelling of the complainant’s mark. See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity). Finally, previous panels have held that the affixation of the gTLD “.com” does not serve to adequately distinguish a complainant’s mark from a respondent’s disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
For these reasons, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Respondent has no license or authorization to use Complainant’s mark. The WHOIS information merely lists “Domain Admin / Whois Privacy Corp.” as registrant and Respondent has failed to submit any evidence for the Panel’s consideration. The Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Compagnie Generale des Etablissements Michelin v. Lisa Katz, D2015-1156 (WIPO Aug. 25, 2015) (that Respondent registered the disputed domain name with a privacy shield service supports finding that Respondent has no rights or legitimate interests in the disputed domain name).
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Indeed Respondent’s disputed domain name attempts to take advantage of Complainant’s famous mark in selling advertisements to third parties for a various products using in cooking and kitchens, and for a portable car seat that visitors to Respondent’s website might assume was endorsed or approved by Complainant. Past panels have concluded that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent’s disputed domain name resolves to a website that displays links to products and services that are in the same industry as Complainant; see Compagnie Generale des Etablissements Michelin v. Lisa Katz, D2015-1156 (WIPO Aug. 25, 2015) (that the website at the disputed Domain Name has been used for advertisement links to third-part products and to promote products in the same industry as the Complainant supports a finding that the disputed Domain Name has ben registered and used in bad faith.).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002-0701 (WIPO Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO Oct. 13, 2000).
Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with 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).
Respondent (who did not reply to the Complainant’s contentions) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the 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 name.
The only plausible explanation for Respondent’s use of the MICHELIN trademark in the disputed domain name would appear to be to pass its business off as being affiliated with Complainant, thereby compelling the conclusion that Respondent is acting in bad faith. See Ciccone v. Parisi et al., D2000-0847 (WIPO Oct. 12, 2000) (“The only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”; domain name MADONNA.COM ordered transferred); Tata Sons Ltd. v. Advanced Information Technology Ass’n, D2000-0049 (WIPO Apr. 4, 2000) (transferring TATA.ORG to complainant where respondent was “obviously aware of the longstanding, enormous reputation of the name TATA” and “offered no explanation as to how it adopted the word TATA as a domain name”).
Indeed Respondent is using the disputed domain name to offer products in the same industry as Complainant. Past panels have found bad faith where a respondent used a disputed domain name that incorporates a complainant’s mark to redirect internet users to a respondent’s competing website. See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel thus finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Further, Respondent is attempting to attract and confuse internet users for commercial profit through the use of Complainant’s mark to attract users its website. Indeed, the MICHELIN mark is famous worldwide and Respondent is using it to derive revenue from advertising links to products that are related to food and cooking, which are related to Complainant’s activity as a publisher of the Michelin Guide. Panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent was found to be operating a confusingly similar domain name to attract and divert internet users to its own website for commercial gain. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). The Panel finds that Respondent is using the disputed domain name to confuse and attract internet users for commercial gain. Consequently, it finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <leguidemicheline.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 31, 2015
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