Michelin North America, Inc. v. Amir Tarighat
Claim Number: FA1510001643537
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 Amir Tarighat (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <michelinservices.com>, <michelinmanagement.com>, and <michelincleaning.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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 22, 2015; the Forum received payment on October 23, 2015.
On October 22, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <michelinservices.com>, <michelinmanagement.com>, and <michelincleaning.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@michelinservices.com, postmaster@michelinmanagement.com, and postmaster@michelincleaning.com. Also on October 23, 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 November 11, 2015.
An additional submission was received from Complainant and determined to be complete on November 16, 2015.
An additional submission was received from Respondent and determined to be complete on November 19, 2015.
On November 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgard Montaury Pimenta 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 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. Complainant has registered the MICHELIN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 892,045, registered June 2, 1970), which demonstrates its rights in its mark. The <michelinservices.com>, <michelinmanagement.com>, and <michelincleaning.com> domain names are confusingly similar to Complainant’s mark as they add the generic terms “services,” “management,” or “cleaning,” respectively, and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names 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 names or a legitimate noncommercial or fair use. Rather, Respondent is not making an active use of any of the domain names, which resolve to webpages that say “Website Coming Soon!”.
Respondent has registered and is using the disputed domain names in bad faith. Respondent makes no active use of the disputed domain names and admitted having no intention of using them, offering to transfer the domain names to Complainant. Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark.
B. Respondent
Respondent registered the domain names in question for the purpose of establishing a home and office cleaning agency in New York City, New York. Complainant’s trademark registrations fall explicitly within the realm of automotive vehicles and make mention of cleaners only as it relates to wheel and tire cleaners. Respondent’s domain names are not confusingly similar to Complainant’s mark because the terms “services,” “management,” and “cleaning” are terms commonly associated with cleaning service contracts in large office buildings or residential buildings for their common areas.
Respondent has rights and legitimate interests under Policy ¶ 4(a)(ii). Respondent registered the domain names in question for the purpose of establishing a business. Respondent’s domain names currently resolve to an inactive webpage because Respondent’s cleaning agency has not yet officially launched.
Respondent has not registered and is not using the domain names in question in bad faith. Respondent directs the Panel’s attention to the fact that Complainant has not advanced any arguments under Policy ¶ 4(b); Respondent reiterates that is has not violated any of the Policy ¶ 4(b) elements. Respondent has not engaged in conduct proscribed by Policy ¶ 4(a)(iii). Respondent registered the domain names in question with the intention of using them to promote its cleaning agency.
C. Additional Submissions
C.1 Complainant`s additional submissions
Basically, Complainant alleges that:
Unlike the publicly available evidence of Complainant’s activities in connection
with the MICHELIN brand, none of the activities alleged by the Respondent in section 7.g. of the Response could have been known prior to the submission of the Response.
The Respondent fails to deny that he had actual knowledge of Complainant’s
rights in the MICHELIN mark before he registered the disputed domains.
The Respondent appears to acknowledge the fame of the MICHELIN mark, though contending such fame is somehow limited to tires and automotive goods and services.
The response is missing any explanation of why the Respondent
chose to include the famous MICHELIN brand in each of three domains registered on the same day.
It was only because Respondent’s privacy service identified Respondent’s residential address where he could be sued under 15 USC §1125(d) that he decided to come out from behind the privacy shield and respond Complainant’s cease and desist warning letter with the offer to transfer the domain.
The fame of the MICHELIN mark is not limited to tires or automotive goods and
services.
At the turn of the 20th century, Complainant created the MICHELIN Guide, its
first travel publication, in an effort to encourage motorists to travel in the recently
introduced automobile.
Complainant’s travel guide includes a professional rating system known as the
MICHELIN STAR. Complainant’s professional rating of quality restaurants is based on a unique, time-tested methodology that ensures that the MICHELIN STAR rating can be relied upon. Complainant is famously known for its MICHELIN STAR ratings of restaurants throughout the world.
Complainant holds registrations of the MICHELIN mark with the United States
Patent and Trademark Office. Complainant has Reg. No. 1,399,361 for travel guides, maps, calendars, cards, clothing and play-things like balloons, toy trucks and toy cars.
Complainant also has Reg. No. 3,329,924 for travel information services that provide driving directions and addresses.
Complainant’s first use in commerce for such services was 2007. Complainant also has Reg. No. 3,313,055 for software databases relating to maps and addresses. Complainant’s first use in commerce for such goods was 2007.
The Respondent does not deny that he attached the famous MICHELIN brand to
the disputed domains with the intent to take advantage of the goodwill associated with the famous MICHELIN brand. The businesses that deal with MICHELIN goods and services, including such businesses as hotels, motels, restaurants and travel agencies for example, are likely to have rooms (hotels and motels for example) and offices that need to be cleaned, and the persons who work at these businesses are likely to have homes that might need to be cleaned.
The Respondent does not deny that he attached the famous MICHELIN brand to
the domains with the intent to attract to the websites to be resolved from these domains, Internet traffic from persons searching for the numerous goods and services associated with the famous MICHELIN brand.
Respondent merely utilized Complainant’s MICHELIN mark to create an impression of association with Complainant and finding that no rights or legitimate interests exist under Policy.
Since Respondent has indicated an absence of an intent to use the domains for any legitimate purpose, it can be assumed that he intends to retain the disputed domains for the purpose of resale, and this purpose is not a legitimate and fair use of the domains.
The Respondent’s course of conduct of stalling Complainant under the pretense of offering to transfer the domain not only calls into question the credibility of the Respondent, but also constitutes evidence of bad faith registration and use under Policy.
All of the evidence proffered and described under section 7.g. of the
Response easily could have been manufactured for the purpose of supporting the Response.
None of the Respondent’s so-called evidence supports an explanation of why he
also registered the <michelinservices.com> and <michelinmanagement.com> domains.
At the end, Complainant affirms that having no rights or legitimate interest in the MICHELIN mark, Respondent’s registration and use of the disputed domain names, which are confusingly similar to Complainant’s MICHELIN mark, was done in bad faith and our being used by Respondent in bad faith.
C.2 Respondent’s additional submissions
Basically, Respondent argues that:
Because Complainant’s reply was past the deadline, it should be stricken and its
substantive arguments should not be considered.
The Complainant’s untimely additional response adds new trademarks that were not asserted in the Complaint. Complainant should be precluded from bootstrapping these additional marks to his Complaint.
The additional marks are similarly unrelated to the Respondent’s domains or business, as none have any connection with residential and office cleaning services.
The Complainant makes a desperate argument that some of the trademarks
that Complainant asserts for the first time in its Reply (marks which are not well known) are used in a division of their company that reviews hotels and restaurants, and that because hotels have rooms and restaurants have offices, they must use cleaning companies. Also, Complainant argues that “persons who work at these businesses are likely to have homes that might need to be cleaned,” and therefore might be confused by a cleaning company that uses the name Michelin. This tangential connection is a stretch.
The Complainant is not in the business of cleaning homes and offices, therefore, does not compete with Respondent
No reasonable person could confuse a hotel and restaurant reviewing
company with a home and office cleaning company.
The Respondent explicitly denies any intention whatsoever of using the Complainant’s fame or goodwill for any financial gain or to promote his business.
Respondent would have no logical reason to use Complainant’s trademark: The
Complaint alleges that Complainant is “famous” for its Tires and Wheels, which
have nothing to do with Respondent’s business of residential and office cleaning.
Tires and Wheels aren’t really seen as ‘clean’ so there would be no benefit there
to the Respondent of associating with the Complainant.
The Complainant, has provided no evidence to support its argument that
Respondent indented to (nor actually did) use their goodwill.
The Respondent does not acknowledge the fame of the Complainant. Trademarks have scopes, categories, and classes.
The Complainant’s argument implies that any business popular within any
category would automatically have unlimited fame worldwide across every
segment of the population in every context.
The Complainant alleges that the Respondent had no intention to use the domains. The Respondent denied this, as it is factually incorrect and taken out of context.
The Complainant states that using Privacy Registration in it of itself shows bad
intentions. This is completely false and no evidence or grounding in law is provided to illustrate this point.
The Respondent reiterates that he has never sold a domain and never registered the domains with the intention of selling it.
Respondent has not manufactured any evidence or arguments, as alleged by
Complainant.
At the end, Respondent states that the Complainant has still not proven each of the three requirements to prove his case.
Complainant 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. Complainant has registered the MICHELIN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 892,045, registered June 2, 1970), which demonstrates its rights in its mark in connection with
Complainant has registered the MICHELIN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 0892045, registered June 2, 1970), which it uses in connection with the sale of tire.
Respondent is in the process of establishing a home and office cleaning agency in New York City, New York.
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 Complainant indisputably has rights in the registered MICHELIN mark.
It is a common practice under the Policy to disregard, in appropriate circumstances, the generic Top-Level Domains (“gTLD”) such as the “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i).
The first element of the disputed domain names are identical to the Complainant’s well known MICHELIN trademark, while the second element are generic words. In the Panel’s view, this combination of elements does not distinguish the disputed domain name from the MICHELIN trademark.
The Panel finds that this element of the Policy concerns only the identity or confusing similarity of the domain name and a mark in which the Complainant currently has rights. UDRP panels typically apply a "low threshold" test for confusing similarity under the first element of a Policy complaint, proceeding to the merits of the case under the other elements of the Policy if there is "sufficient similarity" between the disputed domain name and the relevant trademark. See, e.g., Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression.
"Panels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant's mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is 'confusingly similar' to the mark."
Therefore, the Panel finds that the disputed domain names are confusingly similar to the MICHELIN trademark in which the Complainant has rights, and that the Complainant has established the first element of paragraph 4(a) of the Policy.
The following are examples of circumstances whereby a respondent may show it has rights or legitimate interests in a particular domain name (paragraph 4(c) of the Policy):
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Whilst Complainant has made various statements towards supporting its claim that Respondent has no rights or legitimate interests in respect of all the disputed domain names, the Panel is of the view that Respondent has provided admissible and relevant evidences, which demonstrates that he has a legitimate right and interest therein.
In fact, the evidences submitted shows that before any notice of the dispute Respondent was preparing to use the disputed domain names in connection with a bona fide offering of services related to a home and office cleaning agency (which does not compete with Complainant`s products and services in anyway).
Furthermore, the Panel finds that prior panels have recognized that there are legitimate reasons why a registrant may wish to use a privacy shield in appropriate cases. These include may include avoiding spam e-mail and preventing reprisals for anonymous criticism. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
In view of all the evidences provided by the Respondent, considering that Respondent is clear in the process of setting up his business for cleaning services, this Panel concludes that he has been able to show circumstances that are specified in paragraph 4(c) of the Policy as being evidence of rights or legitimate interests in the disputed domain names.
Thus, this Panel finds that the Respondent does have rights or legitimate interests in the disputed domain name.
Having found that Respondent has rights and interests in respect of the at-issue domain names bad faith is logically precluded. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
However, it is important to note that, based on all the submitted evidences, the Panel finds that Respondent has not registered or used the disputed domain names in bad faith because it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Therefore, the panel finds that Complainant has failed to establish that Respondent registered and used the disputed domain names in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ordered that the disputed domain names REMAIN WITH Respondent.
Luiz Edgard Montaury Pimenta, Panelist
Dated: December 07, 2015
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