Michelin North America, Inc. v. Yuchan Zhao
Claim Number: FA1509001639765
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 Yuchan Zhao (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelinstarbaby.com>, registered with 1&1 Internet AG.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2015; the Forum received payment on September 30, 2015.
On September 30, 2015, 1&1 Internet AG confirmed by e-mail to the Forum that the <michelinstarbaby.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 September 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2015 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@michelinstarbaby.com. Also on September 30, 2015, 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 October 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <michelinstarbaby.com> domain name is identical to Complainant’s MICHELIN mark.
2. Respondent does not have any rights or legitimate interests in the <michelinstarbaby.com> domain name.
3. Respondent registered and uses the <michelinstarbaby.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the MICHELIN mark in connection with its business as a tire manufacturer and publisher of the MICHELIN guide, which assigns restaurants a “MICHELIN STAR” rating. Complainant has rights in the MICHELIN mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,399,361, registered July 6, 1986).
The <michelinstarbaby.com> domain name was registered on June 22, 2014, and resolves to a website containing various articles about traveling with young children, and offers products that the author recommends. Respondent has failed to submit a Response in this proceeding. However, the Panel notes a document dated September 30, 2015 wherein Respondent states “We waive all rights to this domain, and any proceedings.”
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(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.”).
PRELIMINARY ISSUE – CONSENT TO TRANSFER
Despite Respondent’s apparent waiver of rights to the disputed domain name, the Panel elects to analyze the case under the elements of the UDRP, noting that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. See Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), where the panel similarly noted “Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.”
The Panel finds that Complainant has established rights in the MICHELIN mark through registration with the USPTO. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i).)
Respondent’s <michelinstarbaby.com> domain name is confusingly similar to Complainant’s MICHELIN mark because it merely adds the generic terms “star” and “baby” and the generic top-level domain “.com” to Complainant’s mark. Panels have found that adding generic or descriptive terms to a mark does not create a distinct domain name. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Panels have also held that adding the generic top-level domain “.com” is not relevant when analyzing confusing similarity. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that Respondent’s <michelinstarbaby.com> domain is confusingly similar to Complainant’s MICHELIN mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have 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 argues that Respondent is not commonly known by the disputed domain name. The WHOIS information lists Yuchan Zhao” as the registrant of record, which does not resemble the disputed domain name. Previous panels have found that a respondent is not commonly known by a disputed domain based on WHOIS information and a lack of information to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel thus finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii).
Complainant claims that Respondent has not been using the disputed domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The <michelinstarbaby.com> domain name diverts Internet users to a website containing articles about traveling with young children, and offers products that the author recommends, no doubt for profit. It is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a complainant’s mark is used to divert users to an unrelated website. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services). Accordingly, the Panel finds that Respondent is not using the disputed domain name for 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith. To support this contention Complainant argues that Respondent’s domain resolves to a website that uses Complainant’s marks and displays links through which Respondent presumably is compensated. The disputed domain name currently resolves to a website that contains articles such as the “Baby’s Journey Babysitter High Chair Pad,” and “Munchkin Travel Booster Seat.” Prior panels have found bad faith where a respondent used a confusingly similar domain name to commercial profit from diverting internet users to a website unrelated to a complainant’s mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Thus, the Panel finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent had knowledge of Complainant's rights in the MICHELIN mark, based on the fame of Complainant’s mark, and on the use of the disputed domain name to host a travel related website. The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and rights and therefore registered the disputed domain name 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 Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <michelinstarbaby.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 29, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page