Michelin North America, Inc. v. Energie Media Group
Claim Number: FA1207001451882
Complainant is Michelin North America, Inc. (“Complainant”), represented by Neil M. Batavia of Dority & Manning, Attorneys At Law, P.A., South Carolina, USA. Respondent is Energie Media Group (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <michelinstarchef.com> and <michelinstarchefs.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 5, 2012; the National Arbitration Forum received payment on July 9, 2012.
On July 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <michelinstarchef.com> and <michelinstarchefs.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2012 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@michelinstarchef.com and postmaster@michelinstarchefs.com. Also on July 9, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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" 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 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
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] Respondent’s <michelinstarchef.com> and <michelinstarchefs.com> domain names are confusingly similar to Complainant’s MICHELIN trademark.
The Respondent has registered the <michelinstarchef.com> and <michelinstarchefs.com> domain names, the predominant parts of which are identical to Complainant’s MICHELIN trademark. Respondent has simply appended the words “star” and “chef” (in the case of <michelinstarchef.com>) or “chefs” (in the case of <michelinstarchefs.com>) to Complainant’s registered trademark, words that are directly related to Complainant’s business of restaurant star rankings in travel guides.
The mere addition of generic or descriptive words to a registered mark does not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to Complainant's mark since it merely adds the word “auction” used in its generic sense); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name was confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant was engaged, did not take the disputed domain name out of the realm of confusing similarity); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> was confusingly similar to the complainant’s MARRIOTT mark). ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
[b.] Respondent does not have any rights or legitimate interests in the <michelinstarchef.com> and <michelinstarchefs.com> domain names. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
(i.) Respondent’s domain names previously resolved to parked pages that displayed links for tires and restaurants. It is likely that Respondent received compensation in the form of click-through fees from this use of the disputed domains. Thus, Respondent’s use of the disputed domain names 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)).
After receiving correspondence from Complainant, the Respondent’s Registrar (GoDaddy.com), appears to have suspended use of the <michelinstarchef.com> and <michelinstarchefs.com> domain names as parked pages. Such inactive use is referred to as “passive holding.” Respondent’s non-use of domain names that are confusingly similar to Complainant’s MICHELIN mark is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶4(c)(iii). Respondent’s inaction permits the inference that it lacks rights and legitimate interests in the domain names. See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names); see also Not My Kid, Inc. v. Sawchak, FA 167978 (Nat. Arb. Forum Sept. 23, 2003) (“[The] Panel finds that the passive holding of the domain name is an indication that Respondent does not have rights or legitimate interests in the domain name.”); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).
(ii.) Respondent is NOT commonly known by the <michelinstarchef.com> and <michelinstarchefs.com> domain names as evidenced by the WHOIS information (provided in Annex [A]); thus, Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
(iii.) Respondent’s passive holding of the disputed <michelinstarchef.com> and <michelinstarchefs.com> domain names does NOT constitute a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
[c.] Respondent registered and used the <michelinstarchef.com> and <michelinstarchefs.com> domain names in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
It can be inferred that Respondent had actual or constructive knowledge of Complainant’s rights in the MICHELIN trademark because the mark is recognized worldwide and has been registered with the USPTO and Respondent clearly intended for users to associate the domain names with links associated with Complainant’s goods and services. Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶4(a)(iii). See Digi Int’l, Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).
Respondent’s domain names previously resolved to websites displaying click-through links. This diversion scheme is disrupting Complainant’s business by misleading Internet users searching for Complainant’s tire or restaurant rating services. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) where that respondent used the domain to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007).
In addition, the fact that Respondent currently passively holds the disputed <michelinstarchef.com> and <michelinstarchefs.com> domain names is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
Furthermore, while each of the circumstances listed under Policy ¶4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).
Respondent’s registration of the disputed <michelinstarchef.com> and <michelinstarchefs.com> domain names, domain names that incorporate the Complainant’s MICHELIN mark in its entirety, was likely based on the distinctive and well-known qualities of Complainant’s mark. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
In sum, Respondent’s passive holding of domain names confusingly similar to Complainant’s MICHELIN mark evidences bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order transferring or cancelling a domain name:
(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(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.”).
Complainant established its rights in the MICHELIN mark by registering the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,399,361 registered July 1, 1986). Complainant submitted printouts from the USPTO website to evidence its registration, which is normally sufficient to prove Complainant’s rights in the mark. Since there are no other factors present, the Panel concludes Complainant has adequately established its rights in the MICHELIN mark under Policy ¶4(a)(i) by registering it with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”).
Complainant claims Respondent’s <michelinstarchef.com> and <michelinstarchefs.com> domain names are confusingly similar to Complainant’s MICHELIN mark. The disputed domain name includes Complainant’s entire mark and adding the terms “star,” “chef,” and “chefs.” The terms added directly relate to Complainant’s practice of granting different chefs a MICHELIN Star-Rating as a part of Complainant’s restaurant review business. The Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s MICHELIN mark under Policy ¶4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the disputed domain names. The WHOIS information identifies the registrant of the disputed domain names as “Energie Media Group,” which clearly differs from the disputed domain names. Respondent failed to provide any evidence to support a finding to the contrary. Thus, based upon the evidence available, the Panel concludes Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends Respondent’s previous and current uses of the disputed domain names are not bona fide offerings of goods or services or a legitimate noncommercial or fair uses. Respondent previously resolved the disputed domain names to a website offering links to tire service companies and restaurants, which are related to Complainant’s restaurant guide and tire business. Complainant claims Respondent collected click-through fees from the links, which Respondent does not contest. In the context of this case, Respondent’s prior use of the disputed domain names does not qualify as 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
The disputed domain names currently resolve to an inactive website. Complainant submits a printout of the resolving website, which identifies the website as inactive. Respondent’s “use” of the domain name is nominal and it cannot acquire rights by failing to use the disputed domain names. While a domain name can be used for several purposes, including: (1) a website (ranging from informational to eCommerce) (2) an address for email, or (3) to prevent another from using the domain name, Respondent does not make any such claims (if only because Respondent hasn’t made any response at all). Based upon the evidence provided, the Panel finds Respondent’s current use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) and Policy ¶4(c)(iii), respectively. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant points out Respondent previously resolved the disputed domain names to a website offering links to tire service companies and restaurants, which are related to Complainant’s business. Complainant asserts Respondent’s previous use disrupted Complainant’s business. Respondent generates revenue by collecting click-through fees when Internet users go to the resolving website and use the links offered (even if only by getting a free parking page). In light of these undisputed claims, the Panel finds Respondent used the disputed domain names to disrupt Complainant’s business. This means Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶4(b)(iii).”).
Complainant claims Respondent currently resolves the disputed domain name to an inactive website. Complainant submits a printout from the resolving website to support its argument. The printout provided indicates Respondent’s websites are now inactive. There is no evidence the domain names are being used for any other purpose (and a website is only one way a domain name may be used). Therefore, the Panel concludes Respondent registered and uses the disputed domain names in bad faith under Policy ¶4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Complainant alleges Respondent had actual or constructive knowledge of Complainant’s rights in the MICHELIN mark when Respondent registered the disputed domain names. While constructive knowledge is not typically sufficient to find bad faith registration and use, the Panel concludes Respondent had actual knowledge of Complainant’s rights in the MICHELIN mark before registering the domain names in light of their famous character. This means Respondent registered and used the disputed domain names in bad faith under Policy ¶4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <michelinstarchef.com> and <michelinstarchefs.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, August 7, 2012
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