Michelin North America, Inc. v. John Deyrmandjian / BSJA, INC.
Claim Number: FA1510001643378
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 John Deyrmandjian / BSJA, INC. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <michelintireman.org>, <michelintireman.com>, <michelintireman.net>, and <michelintireman.info> registered with GoDaddy.com, LLC.
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 October 21, 2015; the Forum received payment on October 23, 2015.
On October 21, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <michelintireman.org>, <michelintireman.com>, <michelintireman.net>, and <michelintireman.info> 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 October 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@michelintireman.org, postmaster@michelintireman.com, postmaster@michelintireman.net, postmaster@michelintireman.info. Also on October 23, 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 November 16, 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 <michelintireman.org>, <michelintireman.com>, <michelintireman.net>, and <michelintireman.info> domain names are confusingly similar to Complainant’s MICHELIN mark.
2. Respondent does not have any rights or legitimate interests in the <michelintireman.org>, <michelintireman.com>, <michelintireman.net>, and <michelintireman.info> domain names.
3. Respondent registered and uses the <michelintireman.org>, <michelintireman.com>, <michelintireman.net>, and <michelintireman.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the MICHELIN mark in connection with the design, manufacture, and marketing of vehicle tires. Complainant has registered the MICHELIN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 892,045, registered June 2, 1970).
Respondent registered the <michelintireman.org>, <michelintireman.com>, <michelintireman.net>, and <michelintireman.info> domain names on August 15, 2014, and has failed to make any active use of them.
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.”).
The Panel finds that Complainant has adequately demonstrated rights in the MICHELIN mark for the purposes of Policy ¶ 4(a)(i) through its registrations with the USPTO. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Respondent’s <michelintireman.org>, <michelintireman.com>, <michelintireman.net>, and <michelintireman.info> domain names are confusingly similar as they each incorporate the MICHELIN mark fully, while adding the generic/descriptive terms “tire” and “man” along with various gTLD’s. Prior panels have held that confusing similarity exists where generic/descriptive terms are added to a mark that remains the salient feature of the domain name. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). The addition of various gTLDs also fails to overcome a finding of confusing similarity, as gTLDs are required when registering domains. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that Respondent’s <michelintireman.org>, <michelintireman.com>, <michelintireman.net>, and <michelintireman.info> domain names are confusingly similar to the 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 has no rights or legitimate interests in the <michelintireman.org>, <michelintireman.com>, <michelintireman.net>, and <michelintireman.info> domain names. Complainant urges that Respondent is not commonly known by the disputed domain names, nor is Respondent affiliated with Complainant. Since Respondent has failed to supply any evidence, the Panel accepts Complainant’s assertions and finds that Respondent does not have rights under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent has failed to make any active use of the domains in over a year since registering them, and thus there is no bona fide offering of goods or services or any legitimate noncommercial or fair use. Previous panels have agreed that a failure to make an active use evinces no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). 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)). Therefore, the Panel finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or any legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and used the <michelintireman.org>, <michelintireman.com>, <michelintireman.net>, and <michelintireman.info> domain names in bad faith. Since Policy ¶ 4(b) elements are not exclusive in findings of bad faith, the Panel considers Complainant’s arguments under Policy ¶ 4(a)(iii), noting that Respondent’s inactive holding of the domain names can constitute bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Complainant argues further that it is iinconceivable that Respondent could have registered the disputed domain names without knowledge of the MICHELIN mark and Complainant’s rights, due to longstanding use and goodwill of the mark. The Panel agrees and finds that Respondent registered the disputed domain names with actual knowledge. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
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 <michelintireman.org>, <michelintireman.com>, <michelintireman.net>, and <michelintireman.info> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 25, 2015
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