Michelin North America, Inc. v. GLobal FB Holdings Inc
Claim Number: FA1707001742000
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 GLobal FB Holdings Inc (“Respondent”), represented by Igor Radovanović of SOG / Samardžić, Oreški & Grbović Law Firm, Republic of Serbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelinvr.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2017; the Forum received payment on July 28, 2017.
On July 28, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <michelinvr.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 July 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2017 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@michelinvr.com. Also on July 28, 2017, 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 August 21, 2017.
An additional submission from Complainant was received on August 22, 2017.
On August 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant designs, manufactures and markets tires. Complainant uses the MICHELIN mark to promote its business. Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 892,045, registered June 2, 1970).
2. Respondent’s <michelinvr.com> domain name is confusingly similar to Complainant’s mark because it merely appends the generically descriptive acronym “vr,” which is a common acronym for “virtual reality,” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
3. Respondent has no rights or legitimate interests in the domain name. Complainant has not licensed or otherwise authorized Respondent to use its MICHELIN mark in any fashion, and Respondent is not commonly known by the domain name.
4. Respondent is not using the <michelinvr.com> domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Instead, Respondent’s <michelinvr.com> resolves to an inactive website displaying the statement “website coming soon.”
5. Respondent registered and is using the <michelinvr.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith registrations and has registered the domain name for the purpose of preventing Complainant’s use of the domain name. Respondent has also attempted to disrupt Complainant’s business by diverting Internet users searching for Complainant’s website, to Respondent’s website. Furthermore, Respondent failed to actively use the domain name for a substantial amount of time, had actual knowledge of Complainant’s rights in the mark, and engaged a privacy service to conceal its true identity.
B. Respondent
1. Respondent registered the <michelinvr.com> domain name on June 30, 2016. Respondent has rights and legitimate interests in the <michelinvr.com> domain name because Respondent had demonstrable preparations to use the domain name before the current proceeding began. Respondent is currently using the domain name in connection with a legitimate noncommercial fair use by using the resolving website to provide non-profit humanitarian information.
2. Respondent did not register or use the domain name in bad faith because Respondent has rights and legitimate interests in the domain name through proper registration. Respondent also does not commercially benefit from the domain name and has never offered to sell the domain name to the public or to Complainant directly.
C. Additional Submissions
1. Respondent concedes that Complainant’s mark is famous and that Respondent had actual knowledge of Complainant’s rights in the mark because it failed to deny such facts in its Response. Respondent has also failed to support its contention that the “vr” in the <michelinvr.com> domain name stands for violent rage and supplied evidence that the acronym is a possible abbreviation for “virtual reality”.
2. Respondent’s failure to respond to Complainant’s cease and desist letter evidences Respondent’s lack of credibility and legitimate interests in the domain name. Additionally, Respondent’s assertion that Respondent is not promoting anything remotely similar to Complainant’s services is untrue because Complainant uses the MICHELIN mark in connection with humanitarian interests.
3. Respondent registered and uses the domain name in bad faith by failing to actively use the domain name’s resolving website. Respondent failed to present any evidence of demonstrable preparations to use the domain name. Further, Respondent has failed to support its contention that the resolving website operates through ever evolving and new content, and that articles, videos, and other content are to be provided through the site. Additionally, Respondent did not provide any plausible reason for Respondent’s inability to provide the Panel with the useful data demonstrating the future content of the website.
4. Respondent failed to deny that Respondent’s identity is Federico Bavastro and also failed to deny that Respondent was guilty of similar bad faith domain registration in connection with famous marks to which the “vr” is appended. Lastly, Respondent did not offer any explanation as to its use of a privacy service to protect its identity in light of Respondent’s nonprofit use of the site.
Complainant holds trademark rights for the MICHELIN mark. Respondent’s domain name is confusingly similar to Complainant’s MICHELIN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <michelinvr.com> domain name and that Respondent registered and uses the domain name 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:
(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 claims it registered the mark with the USPTO (e.g. Reg. No. 892,045, registered June 2, 1970). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the MICHELIN mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <michelinvr.com> domain name is confusingly similar to Complainant’s mark because it merely appends the generically descriptive acronym “vr,” which is a common acronym for “virtual reality,” and the gTLD “.com” to the fully incorporated mark. The appendage of acronyms and a gTLD are not sufficiently distinguishing to overcome confusing similarity. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). As such, the Panel holds that Respondent’s <michelinvr.com> domain name is confusingly similar to Complainant’s mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <michelinvr.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the <michelinvr.com> domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its MICHELIN mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a domain name especially where a privacy service has been engaged. A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record lists “GLOBAL FB HOLDINGS INC” as the current registrant. Therefore, the Panel holds that Respondent is not commonly known by <michelinvr.com> per Policy ¶ 4(c)(ii).
Next, Complainant contends that Respondent is not using the <michelinvr.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii). Instead, the domain name resolved to an inactive website from the time of registration on June 30, 2016 until at least February 2017. Panels have held that failure to make an active use of a disputed domain name does not confer legitimate rights in the domain. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Upon notice from Complainant of the impending domain dispute, the record shows that Respondent changed the website to resolve to a single webpage that “does not contain any material that one would expect to find on a legitimate business site: address, contact information, etc.” It is a one-page document with two pictures and the heading “Mind challenge and eliminate violate rage in Relationships.” A domain name is not used in connection with a bona fide offering of goods or services when the respondent fails to demonstrate preparations to use the domain name prior to being notified of the potential domain name dispute. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”). Therefore, the Panel agrees with Complainant and finds that Respondent did not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has shown that Respondent has engaged in a pattern of bad faith registration and was recently the respondent in a UDRP decision that resulted in a transfer. Complainant has further shown that pursuant to the record on the website of the Secretary of State of Illinois, Frederic Bavastro is listed as the president of the anonymous registrant that registrar, DomainsByProxy, has revealed to be Respondent, GLOBAL FB HOLDINGS, INC. Furthermore, Complainant demonstrates that Frederic Bavastro also has connections with a limited liability company in Florida with almost the identical name as Respondent. Complainant argues that because both of these entities employ the initials FB, Respondent is Frederic Bavastro, President of Global FB Holdings Inc. Moreover, Complainant has provided information that that Respondent has been a party to previous UDRP cases and registered multiple infringing domains that incorporate the acronym “vr.” Complainant has provided the following uncontradicted information:
[A]nother site that appears to be owned by the Respondent has the term “vr” appended to the end of the domain name, with the domain name consisting of the term “vr” appended to a famous mark, namely the “LVMH” mark associated with luxury consumer goods like Louis Vuitton leather goods and expensive Moet champagne and Hennessy cognac. This repeated behavior is evidence of bad faith intent to recoup some benefit from registering the disputed domain. . . .
Furthermore, because it appears very likely that the Respondent’s President already has been the losing party in a UDRP action over a domain similar to the instant disputed domain, the Respondent tries to hide this damning fact from the Panel by registering the domain anonymously and using a corporate entity as the anonymous registrant. While the Respondent here is listed as Global FB Holdings Inc., the previous action involved Frederic Bavastro, who is the President of Respondent Global FB Holdings Inc. In the prior action over the appending of “vr” to a famous mark, the Respondent suggested that “vr” stood for “voice restoration” in the Respondent’s use of the acronym in the domain there at issue. Statoil ASA (Statoil) v. Domains by Proxy LLC, Domainsbyproxy.com / Frederic Bavastro, WIPO Decision D2016-1824 (WIPO Arb. And Mediation Ctr. Oct. 14, 2016) (finding that the Respondent “is also the proprietor of well over one hundred other ‘.com’ domain names with a second level ending with the letters ‘vr’, including . . . .”). This repeated appending of the term “vr” to famous marks was found to defy credibility and constitute evidence of a clear bad faith intent. Statoil ASA (Statoil) v. Domains by Proxy LLC, Domainsbyproxy.com / Frederic Bavastro, WIPO Decision D2016-1824 (WIPO Arb. And Mediation Ctr. October 14, 2016) (finding that the aim was to conceal the true purpose, as their real purpose would warrant domain transfer).
Thus, the Panel agrees that “Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).” Fandango, LLC v. 21562719 Ont Ltd, FA1464081 (Forum Nov. 2, 2012).
Finally, Complainant contends that in light of the fame and notoriety of Complainant’s MICHELIN mark, it is inconceivable that Respondent could have registered the <michelinvr.com> domain name without actual knowledge of Complainant’s rights in the mark. Actual knowledge of a complainant's rights in a mark prior to registering a domain name incorporating that mark is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the MICHELIN mark when <michelinvr.com> was registered. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <michelinvr.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 7, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page