Michelin North America, Inc. v. Andrei Karapetian / -All Star Tire Co
Claim Number: FA1608001691231
Complainant is Michelin North America, Inc. (“Complainant”), represented by James M. Bagarazzi of Dority & Manning, Attorneys at Law, P.A., South Carolina, United States. Respondent is Andrei Karapetian / -All Star Tire Co (“Respondent”), represented by Steven L. Rinehart, Utah, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bfgoodrichtires.forsale>, registered with eNom, Inc.
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.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2016; the Forum received payment on August 26, 2016.
On August 26, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <bfgoodrichtires.forsale> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@bfgoodrichtires.forsale. Also on August 29, 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.
On September 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Francine Siew Ling Tan 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant designs, manufactures and markets tires for several vehicle industries, and is involved in vehicle racing and rallies. Complainant is the registered trademark owner of the BFGOODRICH trade mark (U.S. Registration No. 1,087,694, registered on March 21, 1978). Complainant is also the registrant for the domain name <bfgoodrich.com>, registered on August 15, 1996, which is used in relation to a website for the sale of BFGROODRICH tires.
The disputed domain name is confusingly similar to Complainant’s trade mark as it wholly incorporates the BFGOODRICH mark and merely adds the generic term “tires” and the generic Top-Level Domain (“gTLD”) “.forsale”.
Respondent has no rights or legitimate interests in the disputed domain name which he registered on March 2, 2016. Respondent is not a licensee of Complainant and neither has he used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent failed to make any active use of the disputed domain name; the disputed domain name resolves to a holding webpage that merely displays the message “Future home of something quite cool”. Respondent is not commonly known by the disputed domain name. Respondent did not register the disputed domain name until almost four decades after Complainant obtained the exclusive legal right to use the BFGOODRICH trade mark for tires throughout the U.S. Respondent has constructive notice of Complainant’s federal trademark registration for BFGOODRICH. Further, by virtue of the fame of Complainant’s BFGOODRICH trade mark and in view of the inclusion of the term “tires” in the disputed domain name, Respondent must have had actual knowledge of the BFGOODRICH trade mark and Complainant’s rights therein when he registered the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith. This is demonstrated by the fact that Complainant’s BFGOODRICH mark is famous, Respondent failed to make any active use of the disputed domain name, and Respondent used a privacy shield.
B. Respondent
Respondent owns All Star Tire Co. which devotes itself exclusively to the retail of new and aftermarket tires. The disputed domain name is not confusingly similar to Complainant’s mark as the new “.forsale” gTLD was created after panels held that gTLDs are irrelevant for the purposes of the Policy. Respondent’s “.forsale” gTLD indicates the purpose for which Respondent intends to use the disputed domain name, i.e. to sell new and aftermarket tires.
Respondent has rights and legitimate interests in the disputed domain name. Respondent has taken demonstrable steps to use the disputed domain name, and the first-sale doctrine (“the resale of genuine goods bearing the producer’s trade mark by the first or subsequent purchaser of the original article normally does not constitute trademark infringement”) applies as a defense. The applicability of the first-sale doctrine to the Policy has “long been recognized in UDRP decisions beginning with Thomas & Betts International v. Power Cabling Corp (Case AF-0274)”. Complainant’s arguments about the strength of its BFGOODRICH mark are irrelevant to an analysis of the first-sale doctrine or nominative fair use.
Respondent was preparing to resolve the disputed domain name to a website accessible online at bfg.wheels.forsale. The website shows that it was making demonstrable preparations to use the disputed domain name for a purpose that is legitimate under the first-sale doctrine.
Respondent registered and is using the disputed domain name in good faith. This is supported by the Respondent’s defense of nominative fair use and its demonstrable preparations to use the disputed domain name.
C. Additional Submissions
(a) Complainant
The doctrines of nominative fair use or first-sale do not apply to the current dispute and were therefore not addressed in the Complaint. Respondent omitted a significant portion of the Thomas & Betts decision which states, inter alia, that:
“The selling of exactly the same goods as Complainant under a domain name that is identical to the Complainant’s federally registered trademark puts the Respondent beyond the protection of the first sale doctrine. Whilst Respondent may have a legitimate right or interest in using the trademark to name the goods it is re-selling, Respondent should not be permitted to arrogate the domain name corresponding to the trademark solely to itself, to the exclusion of the holder of the trademark.”
The first-sale doctrine only means that Complainant cannot prohibit the sale of tires that legitimately bear the BFGOODRICH mark and this is not something that Complainant is trying to do. The registration of a domain name incorporating another’s trade mark is not “the resale of genuine goods”. Complainant seeks only to prohibit the registration of the disputed domain name that legitimately only belongs to Complainant, the owner of the BFGOODRICH mark.
Respondent has not provided credible evidence of a bona fide offering of goods since the authenticity of the document extracted from of the linked URL http//.bfg.wheels.forsale is at best dubious as those pages could have easily been created solely for the purpose of contesting the proceeding (Respondent’s evidence pertaining to this and which was attached to the Response is dated September 19, 2016). Further, the question to be asked is why this linked website is not being used by Respondent to sell BFGOODRICH tires. If Respondent is indeed a legitimate reseller of genuine BFGOODRICH tires (a fact which Respondent has not established), Respondent could have offered them for sale from the website that resolves from the <allstartire.com> domain.
(b) Respondent
The “.forsale” gTLD, as well as other emerging gTLDs, “are not generic in the same sense that the .com, .net, and .org gTLDs are” and therefore the disputed domain name in this case is not identical to Complainant’s mark. All of the tires which Respondent was preparing to sell were genuine BFGOODRICH tires and evidence of demonstrable preparations to use the disputed domain name had been submitted.
(a) The disputed domain name is confusingly similar to the BFGOODRICH mark in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the <bfgoodrichtires.forsale> domain name.
(c) The disputed 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 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.
The disputed domain name incorporates the BFGOODRICH trade mark in full, with the addition of the generic term “tires”. It is a well-established principle that the addition of generic or descriptive terms to a distinctive trade mark generally results in a determination of confusing similarity to the trade mark as it does little to remove confusing similarity (see Disney Enters.Inc. v. McSherry, FA 154589 (Forum June 17, 2003; The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2006-1137; Arthur Guinnes Son & Co. (Dublin) Ltd v. Healt/BOSTH, WIPO Case D2001-0026). In this instance, the addition of “tires” to the disputed domain name adds to the confusing similarity with Complainant’s BFGOODRICH mark as this is the specific type of good which Complainant is known for and in respect of which the BFGOODRICH is registered as a trade mark.
The Panel disagrees with Respondent’s contention that the gTLD “.forsale” is “not generic in the same sense that the .com, .net, and .org gTLDs are”. The Panel does not see any basis for making such a distinction in gTLDs. Moreover, the well-established principle that gTLDs may be disregarded is based on the fact that they constitute an intrinsic, technical part of a domain name and are not relevant elements in the determination of whether a domain name in dispute is identical or confusingly similar to a complainant’s trade mark. gTLDs are not disregarded in the consideration of paragraph 4(a)(i) of the Rules because they are generic.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been established.
Paragraph 4(c) of the Policy provides that a respondent may demonstrate it has rights or legitimate interests in a domain name in dispute by showing any of the following circumstances:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In relation to paragraph 4(b)(ii) of the Policy, Complainant must first make a prima facie case of Respondent’s lack of rights or legitimate interests in the disputed domain name, and then the burden shifts to Respondent to show he has rights or legitimate interests. (See Hanna-Barbera Prods., Inc. v. Ent’mt Commentaries, FA 741828 (Forum Aug. 18, 2006); AOL LLC v. Gerberg, FA 780200 (Forum Sep. 25, 2006); and Lego Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494).)
The Panel finds that a prima
facie case has been established by Complainant:
(i) Respondent is not a licensee of Complainant, and (ii) neither is the former
commonly known by the terms of the domain name; Respondent’s name per the WhoIs
information is “Andrei Karapetian” and the business associated with Respondent
is All Star Tire Co.
The main question to be addressed at this juncture is whether Respondent has rights or legitimate interests in using the disputed domain name in connection with a bona fide offering of goods or services or if there has been fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. In this regard, the Panel notes that there is nothing in the evidence presented which shows that the goods Respondent sells are not genuine BFGOODRICH-branded tires.
The issue of whether a reseller of trademarked goods have rights or legitimate interests in a domain name which contains such trade mark has been considered in earlier UDRP panel decisions, e.g. in Oki Data Americas, Inc. v. ASD, Inc. (WIPO Case No. D2001-0903) and Philip Morris Incorporated v. Alex Tsypkin case (WIPO Case No. D2002-0946). In the case of Dr. Ing. H.c. F. Porsche AG v. Del Fabbro Laurent (WIPO Case No. D2004-0481), the panel stated:
“To be bona fide, the offering must meet several requirements (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Those include, the following:
- A respondent must actually be offering the goods or services at issue;
- A respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;
- A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent;
- A respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.”
Applying the above-mentioned conditions to the facts of this case and taking into consideration the fact that Respondent did not have the authorization by Complainant to the domain name registration, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name. It is not clear on the evidence presented that Respondent sells only BFGOODRICH-trademarked goods and there is nothing which shows that Respondent has disclosed his relationship with Complainant, which owns the BFGOODRICH trade mark, on his website. The offer for sale of other manufacturers’ products which compete with those of Complainant is not a fair use of Complainant’s trade mark because such use of the mark leads to consumers being directed to competing products.
The Panel further takes the view that generally speaking, without the express authority of the registered trademark owner, a right to resell or distribute the trademark owner’s products does not create a right to register and use a domain name that incorporates, wholly, the relevant mark and which is identical or confusingly similar to the said mark. In this case, Respondent has no trademark rights in BFGOODRICH. In the absence of such proprietary rights in BFGOODRICH and without the authority of Complainant, it would be a stretch for Respondent to claim he has rights or legitimate interests in the disputed domain name. See Beyonce Knowles v. Sonny Ahuja (WIPO Case No. D2010-1431):
“The fact that Respondent is in the fragrance business does not allow Respondent to register the Domain Name at issue. Several WIPO panels have ruled that a re-seller, even an authorized re-seller, cannot use another mark in a Domain Name without the express consent of the mark owner, consent that obviously does not exist here. See, e.g., The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113; Avon Products, Inc. v. Jongsoo Lee, WIPO Case No. D2001-0272.1 Similarly, the fact that Respondent may desire to sell BEYONCÉ fragrance does not give him an absolute right to take <beyoncefragrance.com> as a domain name. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.3. Under the majority view, for a re-seller to make a bona fide use of a protected term in a domain name, Respondent must, inter alia, accurately disclose the respondent’s relationship with the trademark owner. In this case, Respondent has not satisfied this requirement. Indeed, other than asserting in an email that his intention in registering the Domain Name was to establish a website that sold BEYONCÉ fragrance, there is no evidence that this was the purpose.”
Paragraph 4(b) of the Policy states that evidence of bad faith registration and use can be found to be established in any of the following situations:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the web site or location.
Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) presents the consensus view of panelists on the issue of whether bad faith can be found where the domain name is not actively used by the domain name holder and the domain name holder has not taken any active steps to sell the domain name or to contact the trademark holder:
“Panels have found that the apparent lack of so-called active use (e.g. to resolve to a website of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint have been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or the mere “parking” by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)”.
Complainant’s BFGOODRICH mark has been recognized in earlier UDRP panel decisions to be well known (see e.g. Compagnie Generale des Etablissements Michelin, Michelin Recherche et Technique S.A. v. Premium Anvelope Service-Roti S.R.L., Budisteanu Serban, WIPO Case No. D2015-0752; Michelin Recherche et Technique S.A. v. EAC International CO., Limited, WIPO Case No. D2013-1210; Michelin Recherche et Technique S.A. v. Above.com Domain Privacy/Transure Enterprise, Ltd Host Master, WIPO Case No. D2013-0430). It is moreover evident that Respondent had knowledge of Complainant’s trade mark and business, and had the trade mark in mind, when he registered the disputed domain name. The Panel does not find difficulty, in the circumstances of this case, in concluding that Respondent’s aim in registering the domain name incorporating Complainant’s mark was to take advantage of the fame of the BFGOODRICH trade mark and to entice Internet users to his website “by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the web site or location” (paragraph 4(b)(iv, Policy). The UDRP does not preclude the sale of authentic trademark-branded goods by legitimate resellers, but this legitimacy in the reseller’s business does not create or extend a right to register domain names which incorporate, and which is identical or confusingly similar to, the trademark owner’s mark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bfgoodrichtires.forsale> domain name be TRANSFERRED from Respondent to Complainant
Francine Siew Ling Tan, Panelist
Dated: October 16, 2016
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