Michelin North America, Inc. v. Milen Radumilo
Claim Number: FA1608001690135
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 Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <viemichelin.com>, registered with Register.com.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2016; the Forum received payment on August 19, 2016.
On August 22, 2016, Register.com confirmed by e-mail to the Forum that the <viemichelin.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 August 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2016 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@viemichelin.com. Also on August 24, 2016, 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 September 21, 2016, Respondent sent an E-Mail to the Forum, see below.
On September 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it designs, manufactures and markets tires for several vehicle industries, and is involved in vehicle racing and rallies. The Complainant and related entities have a business presence in more than 170 countries worldwide and supply a range of thousands of products. For example, Complainant has sold hundreds of millions of the famous MICHELIN tires throughout the world. At the turn of the 20th century, Complainant created the MICHELIN Guide, its first travel publication, in an effort to encourage motorists to travel in the recently introduced automobile. Since then, hundreds of other travel guides have been developed by Complainant to cultivate and satisfy the pursuit of adventure. Complainant also uses the <viamichelin.com> domain name for a website that provides travelers with information about MICHELIN-rated restaurants that may be found along the traveler’s route.
Complainant states that it has rights in the MICHELIN mark through registration of the mark in the United States in 1986. The mark is also registered in other countries around the world and it is famous. Complainant uses the MICHELIN mark in connection with its business as a tire manufacturer and publisher of the MICHELIN travel guide, which assigns restaurants a “MICHELIN star” rating.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s MICHELIN mark as the domain merely adds the generic word “vie” (which means “life” in French) and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not a licensee of Complainant and has not been commonly known by the disputed domain name. Respondent’s registration of the domain name after Complainant’s multitude of trademark registrations featuring the MICHELIN mark demonstrates Respondent’s lack of rights or legitimate interests. Additionally, Respondent using the disputed domain name to resolve to a website hosting links to third-party businesses is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Further, says Complainant, Respondent should be deemed as having registered and used the disputed domain name in bad faith. Respondent listed the domain for sale which demonstrates bad faith. Respondent uses the confusingly similar domain name to promote products and services in competition with Complainant, which demonstrates bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding. However, on September 21, 2016, Respondent sent an E-Mail, stating (verbatim): ”I sell name for $1000 USD. Thanks you.”
Complainant owns rights in the MICHELIN mark dating back to 1986.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to resolve to a web site that features products and services that compete with those of Complainant. Further, it is offering the disputed domain name for sale.
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(f), 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 (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 disputed domain name is confusingly similar to the MICHELIN mark as the domain merely adds the generic term “vie” meaning “life” in French and “vineyard” in Romanian, and the gTLD “.com,” to the mark. Panels have held that adding a generic term to a mark does not alleviate confusing similarity. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Panels have also held that the presence of the gTLD “.com,” in a disputed domain is irrelevant when analyzing confusing similarity. See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the gTLD “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). Thus the Panel concludes that the disputed domain name is confusingly similar to the MICHELIN mark under Policy ¶ 4(a)(i).
Respondent is not a licensee of Complainant and has not been commonly known by the disputed domain name: WHOIS information associated with the disputed domain name identifies Respondent as “Milen Radumilo” which does not appear to resemble the disputed domain name. Panels routinely find that a respondent is not commonly known by a disputed domain name on the basis of WHOIS information and a lack of information to the contrary. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent uses the disputed domain name to resolve to a website hosting links to third-party businesses. Indeed it resolves to a website hosting links with titles such as, “Itinerario,” “Mappe,” and “Driving Route Planner.” This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. These advertisements compete with Complainant’s publication the “MICHELIN Guide.” Panels have held that using a complainant’s mark to operate a website hosting commercial links to products or services that compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Thus the Panel finds that Respondent’s use of the disputed domain does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
the resolving web site displays a banner offering the domain name for sale, and Respondent explicitly confirmed that he is selling the disputed domain name for a price in excess of out-of-pocket costs. Thus the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Indeed, as already noted, Respondent uses the confusingly similar domain name to promote products and services in competition with Complainant, which demonstrates bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv). The disputed domain resolves to a website hosting links with titles such as, “Itinerario,” “Mappe,” and “Driving Route Planner.” Clicking on these links leads to a page hosting links such as <www.mapquest.com> and <getdrivingdirections.org>. Respondent presumably receives revenue from those click-through advertising links. Panels have held that using a domain name featuring another’s mark for the purposes of hosting competing commercial advertisements or links demonstrates bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv). See Independent Insurance Agents & Brokers of America, Inc. v. Liqian, FA1409001582252 (Forum Nov. 10, 2014) (concluding that because the complainant operated in the insurance business and the respondent was using the disputed domain name to display hyperlinks that ultimately promoted insurance companies and quote rates, the respondent was disrupting the complainants business and demonstrating bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)); Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Accordingly, the Panel finds that Respondent’s advertisement of competing links is evidence of bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <viemichelin.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 21, 2016
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