Compagnie Générale des Etablissements Michelin v. Joao Vargas / Agencia Loud
Claim Number: FA1409001578775
Complainant is Compagnie Générale des Etablissements Michelin (“Complainant”), represented by Nathalie Dreyfus of Dreyfus & associés, France. Respondent is Joao Vargas / Agencia Loud (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelin.br.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2014; the National Arbitration Forum received payment on September 9, 2014.
On September 11, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <michelin.br.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with CentralNic’s Domain Name Dispute Resolution Policy (the “Policy”).
On September 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 2014 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@michelin.br.com. Also on September 12, 2014, 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 October 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 CentralNic 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 CentralNic Policy, CentralNic 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
Complainant has rights in the MICHELIN mark via Brazilian Trademark Registrations (e.g., Reg. No. 800,241,150 registered Dec. 21, 1982). Complainant uses the MICHELIN mark in connection with its manufacturing and marketing efforts relating to tires for various vehicles including airplanes, bicycles, and trucks. The <michelin.br.com> domain name is confusingly similar to the MICHELIN mark.
Respondent lacks rights in the <michelin.br.com> domain name. Respondent is not affiliated with Complainant nor is Respondent authorized to use the mark. Respondent is not commonly known by the <michelin.br.com> name. The disputed domain name resolves to an inactive page.
The <michelin.br.com> domain name was registered or is being used in bad faith. Respondent’s inactive use of the disputed domain name shows bad faith. Respondent had notice, or at least should have had notice, of Complainant’s MICHELIN mark at the time the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MICHELIN mark via Brazilian Trademark Registrations (e.g., Reg. No. 800,241,150 registered Dec. 21, 1982). Complainant uses the MICHELIN mark in connection with its manufacturing and marketing efforts relating to tires for various vehicles including airplanes, bicycles, and trucks.
Respondent registered the <michelin.br.com> domain name on November 5, 2013. The disputed domain name resolves to an inactive page.
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 or is being used in bad faith.
In light of the substantial similarity between the CentralNic Dispute Policy and the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel will draw from UDRP precedent as persuasive in making its decision.
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 has rights in the MICHELIN mark under Policy ¶ 4(a)(i) through Brazilian Trademark Registrations. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <michelin.br.com> domain name is identical to the MICHELIN mark under Policy ¶ 4(a)(i) as the name wholly incorporates the MICHELIN mark. The extension “br.com” is not considered in the Policy ¶ 4(a)(i) analysis as the addition of a top-level domain (“TLD”) is a necessary element of all domain names. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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).
Respondent is not affiliated with Complainant nor is Respondent authorized to use the mark. The WHOIS record identifies “Joao Vargas” of “Agencia Loud” as the domain name registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded 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. The Panel finds that Respondent is not commonly known by the <michelin.br.com> name under Policy ¶ 4(c)(ii).
Respondent has failed to use the <michelin.br.com> domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive page with an error message. Respondent’s inactive use of the <michelin.br.com> domain name shows a lack of rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent’s inactive use of the <michelin.br.com> domain name is evidence of 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).
Respondent had actual notice of Complainant’s MICHELIN mark at the time the <michelin.br.com> domain name was registered. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (actual knowledge of the complainant’s mark when the respondent registered the domain name is evidence of bad faith).
Complainant having established all three elements required under the CentralNic Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <michelin.br.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 21, 2014
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