Michelin North America, Inc. v. Bobbi Goldfinch c/o Gold finch enterprise
Claim Number: FA0909001285536
Complainant is Michelin
North America, Inc. (“Complainant”), represented by Neil M. Batavia, of Dority & Manning, South
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <michelintires.org>, registered with Fabulous.com Pty Ltd.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 23, 2009.
On September 22, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <michelintires.org> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 September 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 14, 2009 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@michelintires.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant designs, manufactures, and markets vehicle tires for several industries throughout the world.
Complainant has a business presence in over 170 countries and produces over 190 million tires per year, accounting for 17.2% of the global tire market.
Complainant is the owner of the MICHELIN trademark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 892,045, issued June 2, 1970).
Respondent is not permitted or authorized to use Complainant’s mark, and Respondent is not commonly known by the disputed domain name.
Respondent, Bobbi Goldfinch c/o Gold finch enterprise, registered the domain name <michelintires.org> on July 7, 2008.
Respondent’s <michelintires.org> domain name is confusingly similar to Complainant’s MICHELIN mark.
The disputed domain name resolves to a website featuring Complainant’s logo as well as an array of click-through links that further resolve to the websites of Complainant’s competitors in the tire supply industry.
Respondent’s behavior in operating this diversion scheme disrupts Complainant’s business by misleading Internet users searching for Complainant’s tire services and directing them to the websites of its business competitors.
Respondent does not have any rights to or legitimate interests in the <michelintires.org> domain name.
Respondent registered and uses the <michelintires.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has sufficiently established rights in the
MICHELIN mark under Policy ¶ 4(a)(i) through its registration of the mark with
the USPTO.
Respondent’s <michelintires.org> domain name wholly incorporates Complainant’s MICHELIN mark, with the mere addition of the descriptive term “tires” and the affixation of the generic top-level domain “.org.” The addition of the term “tires” increases the likelihood of confusion between the subject domain name and the competing mark because it directly relates to Complainant’s products. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity a mark and a domain name where <kohlerbaths.com>, the disputed domain name, contained a complainant’s mark in its entirety, merely adding “the descriptive term ‘baths,’ … an obvious allusion to complainant’s business.”)
Moreover, the affixation of the generic top-level domain “.org” is irrelevant under Policy ¶ 4(a)(i). See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (finding that because a top-level gTLD is a functional element that is required for every domain name, the affixation of “.org” is irrelevant to an analysis conducted under Policy ¶ 4(a)(i)).
Therefore, the Panel concludes that Respondent’s <michelintires.org> domain name is confusingly similar to Complainant’s MICHELIN mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant
must make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light.
If Complainant satisfies its burden, then the burden shifts to Respondent to
show that it does have rights or legitimate interest in the subject domain
names.
Complainant has established a prima facie case
pursuant to Policy ¶ 4(a)(ii), shifting the burden of
proof to Respondent. Because Respondent has not responded to the
Complaint, we may presume that Respondent lacks rights to and legitimate
interests in the disputed
domain name. See Broadcom
Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
Dec. 22, 2004):
Respondent’s failure to respond to the Complaint functions as an
implicit admission that [Respondent] lacks rights and legitimate interests in
the disputed domain name.
It also allows the Panel to accept all reasonable allegations set forth…[in the
Complaint]…as true.
However, we elect to examine the record before us to determine whether there is in it any basis for concluding that Respondent has any rights to or legitimate interests in the disputed domain by application of the standards set out in Policy ¶ 4(c).
We begin by observing that Complainant alleges, and Respondent does not deny, that, Respondent’s domain name resolves to a website that displays Complainant’s logo, accompanied by click-through links, some which promote Complainant’s business competitors. We may presume that Respondent receives compensation in the form of click-through fees from this use of the disputed domain. Thus, we conclude that Respondent’s use of the disputed domain name, as alleged, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to receive click-through fees via sponsored links to a complainant’s business competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
We also note that the pertinent WHOIS information for the
disputed domain names lists Respondent only as “Bobbi Goldfinch c/o Gold finch
enterprise.” Complainant argues that Respondent is not permitted or
authorized to use Complainant’s mark, and that Respondent is not commonly known
by the disputed domain name. Respondent does not deny these
allegations. Therefore, we conclude that Respondent is not commonly known
by the disputed domain name under Policy ¶ 4(c)(ii).
See Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. Forum July 17, 2006) (concluding that a
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the relevant WHOIS
information, suggesting that that respondent was commonly known by a disputed
domain name; see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that,
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s
domain name resolves to a website displaying click-through links which resolve
to the websites of Complainant’s business competitors. Complainant contends that this diversion scheme
is disrupting Complainant’s business by misleading Internet users searching for
Complainant’s tire services to the websites of its competitors. Inasmuch
as Respondent does not deny these assertions, we conclude that Respondent has
engaged in bad faith registration and use of the disputed domain name within
the meaning of Policy ¶ 4(b)(iii). See David Hall Rare Coins v.
This Panel
concludes that by redirecting Internet users seeking information on
Complainant’s educational institution to competing websites, Respondent has
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
In addition, because Respondent presumably receives click-through fees from the use of the disputed domain name, we are entitled to, and do, conclude that Respondent’s use of the domain name confusingly similar to Complainant’s mark is an attempt by Respondent to capitalize on the goodwill that Complainant has established in its MICHELIN mark. Therefore, we further conclude that Respondent has engaged in bad faith registration and use of the contested domain under Policy ¶ 4(b)(iv). See GMAC LLC v. WhoisGuard Protected, FA 942715 (Nat. Arb. Forum May 9, 2007):
Under Paragraph
4(b) of the Policy, evidence that a domain name registrant has intentionally
attempted to attract, for commercial gain, Internet users to the registrant’s
website by creating a likelihood of confusion with the complainant’s mark
serves as evidence of bad faith.
See also Zee TV USA, Inc. v. Siddiqi,
FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in
bad faith registration and use of a domain name that was confusingly similar to
the complainant’s mark by using it to offer links to third-party websites that
offered services similar to those offered by that complainant).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <michelintires.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 2, 2009
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