Michelin North America, Inc. v. tattoogalaxy.com
Claim Number: FA0602000638001
Complainant is Michelin North America, Inc. (“Complainant”), represented by Neil M. Batavia, of Dority & Manning, Attorneys at Law, P.A., Post Office Box 1449, Greenville, SC 29602-1449. Respondent is tattoogalaxy.com (“Respondent”), 319 Baltic St #15, Brooklyn, NY 11201.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bfgoodrichracing.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2006.
On February 2, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <bfgoodrichracing.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 February 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 2006 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@bfgoodrichracing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bfgoodrichracing.com> domain name is confusingly similar to Complainant’s BFGOODRICH mark.
2. Respondent does not have any rights or legitimate interests in the <bfgoodrichracing.com> domain name.
3. Respondent registered and used the <bfgoodrichracing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Michelin North America, Inc., is one of the largest tire manufacturers and distributors in the world, offering over 36,000 products in more than 170 countries. Complainant produces approximately 850,000 tires daily, which constitutes a 19.2% share of the global tire market. Complainant owns the Goodrich Group, which has advertised, marketed, and sold tires under the BFGOODRICH mark since 1977. Complainant is a major sponsor of vehicle racing and rally events.
Complainant has registered the BFGOODRICH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,087,694 issued March 21, 1978). Complainant has also registered the <bfgoodrich.com> (August 15, 1996) and <bfgoodrichtires.com> (June 19, 1997) domain names.
Respondent registered the <bfgoodrichracing.com> domain name on July 30, 2002. Respondent’s domain name resolves to a default page for “Plesk”. Respondent’s website states that the domain name is either not configured or there is no such domain name registered in “Plesk.” The website also displays a link to “Administrator” for more information. Complainant contacted Respondent concerning the domain name, and the Respondent stated that it was not willing to transfer the domain name for less than $10,000. As a result of its conversation with Complainant, Respondent stated it would change the site into a parody website in order to avoid a finding of bad faith. Respondent claimed that it had registered over seventy domain names incorporating famous trademarks, and that it made over $5,000 per year in advertising revenue for diverting Internet users to its 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 has established rights to the BFGOODRICH mark by
registering the mark with the USPTO. See
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.”); see also 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.”).
Respondent’s <bfgoodrichracing.com>
domain name is confusingly similar to Complainant’s BFGOODRICH mark under
Policy ¶ 4(a)(i), because it contains Complainant’s entire mark and simply adds
a generic term to the end. In Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000), the Panel
found that the addition of generic words to the end of the Sony mark rendered
the respondent’s domain names confusingly similar because “[n]either the
addition of an ordinary descriptive word . . . nor the suffix
‘.com’ detract from the overall impression of the dominant part of the name in
each case.” Therefore, Respondent’s
addition of the term “racing” to the BFGOODRICH mark is also confusingly
similar because Complainant’s mark is the dominant part of the domain
name. See PG&E Corp. v. Anderson,
D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding
the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’
following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying [PG&E] mark held by
Complainant”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the <bfgoodrichracing.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to the
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001) ( “Proving that the Respondent has no rights or legitimate interests
in respect of the Domain Name requires the Complainant to prove a negative. 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.”); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <bfgoodrichracing.com>
name. See Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”); see also Canadian
Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution
Sept. 23, 2000) (finding no rights or legitimate interests where no such right
or interest was immediately apparent to the panel and the respondent did not
come forward to suggest any right or interest it may have possessed). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “tattoogalaxy.com,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <bfgoodrichracing.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <bfgoodrichracing.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Moreover, Respondent’s <bfgoodrichracing.com> domain name, which includes Complainant’s BFGOODRICH mark, resolves to a holding page. Respondent registered the domain name on July 30, 2002, and therefore has been passively holding the disputed domain name for almost four years. Panels have held that the passive holding of a domain name for as little as six months provides evidence that a respondent lacks rights or legitimate interests in the domain name. See Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”); see also 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). Thus, Respondent’s passive holding of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii), because Respondent has failed to make any use of the domain name since registering it four years ago.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <bfgoodrichracing.com> domain name, which includes Complainant’s BFGOODRICH mark, resolves to a default page and displays a link to “Administrator.” Therefore, Respondent is passively holding the disputed domain name. Such nonuse provides evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), for as the Panel stated in Phat Fashions, LLC v. Kruger, FA 9619 (Nat. Arb. Forum Dec. 29, 2000), “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” See also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
In addition, Respondent has offered to sell the domain name
to Complainant for $10,000. The Panel
infers that this price is in excess of Respondent’s out-of-pocket costs. In Pocatello Idaho Auditorium Dist. v.
CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002), the Panel
stated that "[w]hat makes an offer to sell a domain [name] bad faith is
some accompanying evidence that the domain name was registered because of its
value that is in some way dependent on the trademark of another, and then an
offer to sell it to the trademark owner or a competitor of the trademark
owner." Respondent admitted to
Complainant that it had registered over seventy domain names containing famous
marks and that it received over $5,000 in advertising revenue from diverting
Internet users to third-party websites.
Therefore, Respondent’s offer to sell the <bfgoodrichracing.com>
domain name constitutes bad faith registration and use under Policy ¶ 4(a)(i),
because Respondent registered the disputed domain name, which is valuable
because it contains Complainant’s BFGOODRICH mark, primarily to sell it to
Complainant. See also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent
registered the disputed domain name and offered to sell it to Complainant for
$10,600. This demonstrates bad faith registration and use pursuant to Policy ¶
4(b)(i).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bfgoodrichracing.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 22, 2006
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