Compagnie Générale des Etablissements Michelin v. Ken Baca / KAC Properties
Claim Number: FA2107001956208
Complainant is Compagnie Générale des Etablissements Michelin (“Complainant”), represented by Nathalie Dreyfus of Dreyfus & associés, France. Respondent is Ken Baca / KAC Properties (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mademichelinstrong.us> and <mademichelintough.us>, 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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2021; the Forum received payment on July 22, 2021.
On July 23, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mademichelinstrong.us> and <mademichelintough.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2021 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@mademichelinstrong.us, postmaster@mademichelintough.us. Also on July 26, 2021, 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 16, 2021.
On August 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
- Founded in 1899 in France, Complainant is a tire and travel company operating with worldwide renown. Its “Michelin” brand tires are the top-selling brand of tires globally, and Complainant has registered its MICHELIN mark with trademark authorities throughout the world, including with the United States Patent and Trademark Office (“USPTO”). In conducting its operations, Complainant registered and owns the domain names <michelin.com> and <michelin.us> among others.
- The disputed domain names, <mademichelinstrong.us> and <mademichelintough.us>, are confusingly similar to Complainant’s trademark as they incorporate the mark in its entirety and only add the generic words “made” and either “strong” or “tough,” along with the “.us” country code top-level domain (“ccTLD”).
- Respondent lacks rights and legitimate interests in the disputed domain names. Complainant has not authorized or licensed Respondent to use the MICHELIN trademark in the disputed domain names. Also, Respondent is not commonly known by the disputed domain names. Moreover, Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use, but instead hosts parked pay-per-click (“PPC”) links on the disputed domain names’ websites.
- Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business for commercial gain by hosting parked PPC (“pay-per-click”) links on the websites attached to the disputed domain names. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the MICHELIN trademark, and Respondent failed to reply to Complainant’s cease-and-desist letter.
B. Respondent
- The disputed domain nanes, <mademichelinstrong.us> and <mademichelintough.us>, are not identical or confusingly similar to Complainant’s MICHELIN trademark. Respondent has registered over 395 domain names, 56 containing the word “made,” and 90 containing the word “strong.”
- Respondent uses the disputed domain names for a legitimate noncommercial and/or fair use. The disputed domain names could be good marketing for Complainant. Respondent bought and uses the domain names as part of its consulting business. After discussions with a Complainant employee, Respondent only uses the disputed domain names to reference Complainant, which is considered a nominative fair use under United States federal case law.
- The disputed domain names were not registered and are not being used in bad faith. The disputed domain names were registered neither for the primary purpose of disrupting Complainant's business nor in an attempt, for commercial gain, to attract internet users to Respondent's websites by creating the likelihood of confusion with Complainant's mark. All of Respondent's actions regarding the disputed domain names result from a brainstorming session with a Complainant executive concerning “employee transitions,” and are legitimate activities within Respondent's consulting business.
Complainant is a French company that manufactures and distributes motor vehicle tires worldwide and has earned a considerable reputation in doing so. Complainant operates under its MICHELIN trademark, which is registered throughout the world, including with the USPTO (e.g., Reg. 892,045, registered June 2, 1970).
The disputed domain names, <mademichelinstrong.us> and <mademichelintough.us>, are owned by Respondent, who registered those domain names on Feburary 16, 2021. The disputed domain names are used to host a website that presents PPC links to third party websites that offer products that compete directly with those sold by Complainant.
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 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Complainant’s registration of its MICHELIN trademark with the USPTO, the Panel concludes that Complainant has the necessary rights in that mark to satisfy Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Michelin North America, Inc. v. Jacob Chalkley, FA 1795455 (Forum May 5, 2010) (“The Panel finds that Complainant’s registration of the MICHELIN mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).”).
The Panel observes that neither of the disputed domain names, <mademichelinstrong.us> and <mademichelintough.us>, is identical to Complainant’s MICHELIN trademark. However, the disputed domain names incorporate Complainant’s MICHELIN mark in its entirety and merely add the generic word “made” along with either the generic word “strong” or “tough” and the “.us” ccTLD. The Panel believes that despite these additions, the defining term of the disputed domain names is Complainant’s mark, which is not a generic term. Furthermore, in the Panel's opinion, the additional generic terms referred to above are exactly those that would directly apply to Complainant’s tire products. Complainant would certainly claim that its tires are “made strong” and “made tough” to attract customers, including internet users. Moreover, prior UDRP panels have consistently found that the addition of such generic terms to well-established trademarks does not eliminate confusing similarity between disputed domain names and those marks. Finally, in determining that both of the disputed domain names are confusingly similar to Complainant’s trademark, the Panel dismisses the addition of a ccTLD as irrelevant in this determination, since such suffixes are required of all domain names. See Google Inc. v. Kun Zhang, FA 1245131 (Forum Mar. 13, 2009) (finding that the “addition of generic terms to a famous mark is insufficient to diminish the confusingly similar nature of the <googlevideodownload.com> domain name, which uses Complainant’s famous GOOGLE mark in its entirety.”); see also Old World Industries, Inc. v. Max Davidovich, D2006-1138 (Wipo Nov. 17, 2006) (finding <herculinertough.com> to be confusingly similar to the HERCULINER mark, stating that the “word ‘tough’ in the [disputed] Domain Name is descriptive in its character and the Complainant has claimed its use in relation to the products offered by it.”); see also Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (“The ccTLD ‘.us’ designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”).
As a result, the Panel finds that Complainant has satisfied the first element of the Policy.
Though Complainant bears the burden of proving this second element of the Policy, given the difficulty of proving a negative proposition, Complainant need only demonstrate a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names before the burden passes to Respondent to show persuasively that he does possesses those rights or interests. See 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”); see also Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011).
Complainant has established that the disputed domain names are confusingly similar to Complainant’s valid MICHELIN trademark and contended clearly that Respondent has not been granted permission to use that mark for any purpose. Therefore, the Panel concludes that Complainant has set forth an acceptable prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent does not claim to be commonly known as either of the disputed domain names, nor to own a company that is thus commonly known, and therefore cannot rely upon the criterion listed in Policy ¶ 4(c)(ii) to support an argument that his has rights or legitimate interests in the disputed domain names.
Respondent does contend that he is making a commercial use of the disputed domain names that should be considered “fair use.” Respondent specifically argues that he is making nominative fair use of the disputed domain names.
The Panel notes that there have been many prior UDRP cases that have addressed respondent’s contentions of nominative fair use. Generally, those cases have led the respective UDRP panels to adopt a four-part test (first articulated in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (Wipo Nov. 6, 2001)) to determine the applicability of said doctrine to a Policy proceeding. See Tyco Fire & Security GmbH v. AJ Shoemaker, FA 1952040 (Forum July 23, 2021); see also American Council on Education v. robel getaneh, FA 1761719 (Forum Jan. 31, 2018). Thus, to demonstrate a nominative fair use interest in a disputed domain name pursuant to Policy ¶ 4(c)(ii), a respondent:
i. must actually be offering the goods or services at issue;
ii. must use the resolving site to sell only the trademarked goods (otherwise, it could be using the trademark to bait internet users and then switch them to other goods);
iii. must accurately disclose the relationship between the domain name registrant and the trademark owner; and,
iv. must not try to corner the market in all domain names, thus depriving the trademark owner from reflecting its own mark in a domain name.
With respect to these necessary criteria, the Panel must note that Complainant has provided compelling evidence that Respondent has attached the disputed domain names to a parking webpage that offers PPC links to the websites of direct competitors of Complainant. That action by Respondent causes the Panel to determine that the second criterion above is not met by Respondent’s use of the disputed domain names, and thus to find that the doctrine of nominative fair use is not applicable in this case. See Sturm, Ruger & Co., Inc v. PHILLIP CAMARDA, FA 1955382 (Forum Aug. 18, 2021) (“...applying the nominative fair use doctrine could also be appropriate in cases other than those involving a reseller of branded parts, provided that the respondent operated a business genuinely revolving around the trademark owner’s goods or services.”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, § 2.8.2 (“Panels have found that PPC websites do not normally meet the Oki Data requirements as they do not themselves directly offer the goods or services at issue.); see also Caesars License Company, LLC v. Gary Vandiver, FA 1654269 (Forum Jan. 29, 2016) (“When a domain name resolves to websites hosting pay-per-click links to competitors of Complainant, that simply does not [qualify] as (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”).
Respondent also argues that he possesses many domain names that utilize the words, “made” and/or “strong,” as part of his “consulting business.” The Panel finds that argument to be irrelevant to this case.
Consequently, the Panel concludes that Respondent has failed to rebut the prima facie case put forth by Complainant.
As a result, the Panel finds that Complainant has satisfied the second element of the Policy.
Policy ¶ 4(b) lists four circumstances that would give rise to a finding of bad faith registration and use of a disputed domain name, but those circumstances are non-exclusive. See Advanta Corp. v. St. Kitts Registry, FA 1068741 (Forum Oct. 18, 2007) (“The Panel finds that the factors listed under Policy ¶ 4(b) are not the exclusive examples of evidence of bad faith registration and use.”).
Prior Policy panels have found bad faith registration and use of a disputed domain name based solely on the worldwide fame of a complainant's mark if a respondent has no connection with that mark. See Gray Television Group, Inc. v. Manila Industries, Inc., D2007-0504 (Wipo June 10, 2007) (There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use.); see also Veuve Clicquot Ponsardin v. The Polygenix Group Co., D2000-0163 (Wipo May 1, 2000).
The Panel believes that Complainant's MICHELIN mark is famous throughout the world, even in South Carolina, the domicile of Respondent. See Michelin North America, Inc. v. GLobal FB Holdings Inc, FA 1742000 (Forum Sept. 7, 2017) (“...in light of the fame and notoriety of Complainant’s MICHELIN mark...”); see also Michelin North America, Inc. v. REGISTRARADS, INC., FA 1628283 (Forum Aug. 24, 2015) (“...the Panel agrees [...] that the MICHELIN trademark is among the most famous trademarks in the industry and enjoys international recognition.”). Moreover, the Panel concludes that Respondent’s claim to have engaged in some kind of consulting services for Complainant, even if true, does not establish a sufficient connection with Complainant or its mark to justify any use by Respondent of that mark in the disputed domain names. Accordingly, the Panel determines that Respondent registered and is using the disputed domain names in bad faith.
As a result, the Panel finds that Complainant has satisfied the third element of the Policy.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mademichelinstrong.us> and <mademichelintough.us> domain names be TRANFERRED from Respondent to Complainant.
Dennis A, Foster, Panelist
Dated: September 2, 2021
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