Michelin North America, Inc. v. Chartops Anushree
Claim Number: FA1609001694266
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 Chartops Anushree (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <es-michelin.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 19, 2016; the Forum received payment on September 19, 2016.
On September 21, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <es-michelin.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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@es-michelin.com. Also on September 21, 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 October 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. 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.
2. 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).
3. Respondent’s domain <es-michelin.com>[1] is confusingly similar to the MICHELIN mark as the domain name merely adds the geographic term “es,” to denote the European country of Spain, and the generic top level domain (“gTLD”) “.com.”
4. Respondent has no rights or legitimate interests in the domain name. Respondent has not been a licensee of Complainant, been commonly known by the disputed domain name, or otherwise affiliated with the domain name.
5. Respondent’s failure to respond to Complainant’s attempts to contact Respondent indicates that Respondent lacks rights or legitimate interests in the <es-michelin.com> domain name.
6. Respondent’s failure to make an active use of the domain name demonstrates bad faith. Further, based on the fame and notoriety of Complainant’s MICHELIN mark, Respondent undoubtedly had actual knowledge of the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MICHELIN mark. Respondent’s domain name is confusingly similar to Complainant’s MICHELIN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <es-michelin.com> domain name, and that Respondent registered and uses the domain name 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 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.”).
Complainant uses the MICHELIN mark in 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 USPTO (e.g., Reg. No. 1,399,361, registered July 6, 1986). See Disney Enters., Inc. v. Kudrna, FA 686103 (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)).
Complainant claims that Respondent’s <es-michelin.com> domain name is confusingly similar to the MICHELIN mark. The domain name includes the entire MICHELIN mark and differs only through the addition of the gTLD “.com,” the letters “es,” presumably meaning “Spain,” and a hyphen. The presence of the gTLD “.com” is not relevant to an analysis of confusing similarity under Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Also, adding letters standing for a geographic location does not prevent a finding of confusing similarity. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark). And, adding punctuation, such as a hyphen, does not differentiate a domain from a mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Accordingly, the Panel holds that Respondent’s <es-michelin.com> domain is confusingly similar to the MICHELIN mark in which Complainant has rights.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <es-michelin.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has not been a licensee of Complainant, nor commonly known by the <es-michelin.com> domain name, or otherwise affiliated with the domain name. WHOIS information associated with the domain identifies Respondent as, “Chartops Anushree,” which does not resemble the domain name. Nothing in the record, or WHOIS information, shows that the Respondent is commonly known by the domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel finds that Respondent is not commonly known by the <es-michelin.com> domain name under Policy ¶ 4 (c)(ii).
Complainant claims that Respondent’s failure to respond to emails from Complainant related to the domain name shows Respondent’s lack of rights or legitimate interests. Where a respondent fails to submit a response or otherwise engage the complainant, it may be inferred that a respondent lacks rights or legitimate interests in a domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel finds that Respondent’s failure to respond to this proceeding shows a lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant first argues that Respondent’s bad faith is evident from failing to make an active use of the disputed domain name. The <es-michelin.com> domain resolves to a website displaying the message “This webpage is not available.” Failing to make an active use of a domain name can be indicative of a respondent’s bad faith. See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). The Panel finds that Respondent has registered and used the domain in bad faith under Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of its MICHELIN mark, it is inconceivable that Respondent could have registered the <es-michelin.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that by incorporating Respondent’s mark in its entirety in the domain name, Respondent most certainly had actual knowledge of Complainant's rights in the mark prior to registering the domain name and find that such knowledge is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds 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 <es-michelin.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 24, 2016
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