DECISION

Michelin North America, Inc. v. Maurice Kratt

Claim Number: FA1903001835025

PARTIES

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 Maurice Kratt (“Respondent”), Nebraska, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <michelinpilotpower.com>, registered with NameSilo, LLC.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 20, 2019; the Forum received payment on March 20, 2019.

On March 21, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <michelinpilotpower.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 March 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2019 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@michelinpilotpower.com. Also on March 22, 2019, 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 April 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

Complainant

1. Complainant, Michelin North America, Inc., uses their MICHELIN and PILOT marks in connection with tires and related services. Complainant has rights in the MICHELIN and PILOT marks based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., MICHELIN - Reg. No. 892,045, registered June 2, 1970) (e.g., PILOT - Reg. No. 1,342,457, registered June 18, 1985). See Compl. Annex. A. Respondent’s <michelinpilotpower.com> domain name is confusingly similar to Complainant’s MICHELIN and PILOT marks, as it merely combines the marks, added the generic/descriptive term “power” and the generic top-level domain (“gTLD”) “.com.”

2. Respondent has no rights or legitimate interests in the <michelinpilotpower.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MICHELIN or PILOT marks in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent utilizes the disputed domain name for the sale of unauthorized or illegitimate products sold by Complainant.

3. Respondent registered and is using the <michelinpilotpower.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where it directly competes by selling unauthorized or illegitimate versions of Complainant’s products. Respondent also registered the disputed domain name with false contact information. Finally, Respondent had actual knowledge of Complainant’s rights in the MICHELIN and PILOT marks at the time the disputed domain name was registered.

Respondent

1. Respondent failed to submit a response in this proceeding.

FINDINGS

1. Respondent’s <michelinpilotpower.com> domain name is confusingly similar to Complainant’s MICHELIN and PILOT marks.

2. Respondent does not have any rights or legitimate interests in the <michelinpilotpower.com> domain name.

3. Respondent registered or used the <michelinpilotpower.com> domain name in bad faith.

DISCUSSION

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

Complainant claims rights in the MICHELIN and PILOT marks based upon registration of the mark with the USPTO (“USPTO”) (e.g., MICHELIN - Reg. No. 892,045, registered June 2, 1970) (e.g., PILOT - Reg. No. 1,342,457, registered June 18, 1985). See Compl. Annex. A. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel therefore holds that Complainant’s registration of the MICHELIN and PILOT marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

Complainant next argues Respondent’s <michelinpilotpower.com> domain name is confusingly similar to the MICHELIN and PILOT marks, as Respondent merely combines the marks, adds the generic or descriptive term “power” and the gTLD “.com”. The combination of a complainant’s marks and the additions of generic/descriptive terms and/or a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Textron Innovations Inc. v. Sheng Liang / Sarawina, FA 1622906 (Forum July 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) where Respondent’s <greenleetextron.com> domain name merely combined Complainant’s TEXTRON and GREENLEE marks and added the “.com” generic top-level domain suffix). Respondent added the term “power” and a “.com” gTLD to Complainant’s combined MICHELIN and PILOT marks when registering the disputed domain name. The Panel agrees that the disputed domain name is confusingly similar to Complainant’s MICHELIN and PILOT marks per Policy ¶ 4(a)(i).

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant argues that Respondent has no rights or legitimate interests in the <michelinpilotpower.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MICHELIN or PILOT marks in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “Maurice Kratt” and no information on record indicated Respondent was authorized to register a domain name with Complainant’s mark. See Compl. Annex C. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <michelinpilotpower.com> domain name.

Complainant further argues Respondent’s lack of rights and legitimate interests in the <michelinpilotpower.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the name resolves to a website which is being used for the sale of unauthorized or illegitimate products sold by Complainant. Use of a domain name to sell unauthorized or illegitimate is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL and PILOT marks, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant contends the domain name resolves to a web page which offers products under Complainant’s MICHELIN and PILOT marks. See Compl. Annex F. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <michelinpilotpower.com> domain name per Policy ¶¶ 4(c)(i) or (iii).

Registration and Use in Bad Faith

Complainant argues that Respondent’s bad faith is indicated by its use of the <michelinpilotpower.com> domain name to divert users away from Complainant’s own website. Specifically, Complainant contends Respondent uses the disputed domain name to offer unauthorized or illegitimate goods bearing Complainant’s MICHELIN or PILOT marks. Use of a confusingly similar domain name to divert users away from a complainant’s website and sell unauthorized goods may demonstrate bad faith per Policy ¶ 4(b)(iii) and/or (iv). See Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015) (“Use of a domain name to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Here, Respondent is using the disputed domain name to sell unauthorized or counterfeit versions of Complainant’s products under the MICHELIN and PILOT marks. See Compl. Annex F. The Panel finds that Respondent is using the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).

Complainant also asserts that Respondent had actual knowledge of Complainant’s rights in the MICHELIN and PILOT marks prior to registering the disputed domain name. A respondent’s actual knowledge of a complainant’s rights in a mark prior to registering a domain name may demonstrate bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant argues Respondent’s usage and selection of the letters, M-I-C-H-E-L-I-N, infers bad faith. Therefore, the Panel finds Respondent had actual knowledge of Complainant’s MICHELIN and PILOT mark, thus supporting bad faith per Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <michelinpilotpower.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: April 26, 2019