Michelin North America, Inc. v. Milen Radumilo
Claim Number: FA1610001696817
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 Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelinpromo.com>, registered with eNom652, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2016; the Forum received payment on October 5, 2016.
On October 6, 2016, eNom652, Inc. confirmed by e-mail to the Forum that the <michelinpromo.com> domain name is registered with eNom652, Inc. and that Respondent is the current registrant of the name. eNom652, Inc. has verified that Respondent is bound by the eNom652, 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 October 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@michelinpromo.com. Also on October 6, 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 November 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 designs, manufactures, and markets tires for several vehicle industries, and is involved in vehicle racing and rallies. Complainant has registered the MICHELIN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 892,045, registered June 2, 1970), which demonstrates Complainant’s rights in its mark. The <michelinpromo.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “promo” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Respondent is not a licensee of Complainant. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website containing links to products that are directly competitive with Complainant’s business. Additionally, Respondent used a privacy shield when it registered the domain name.
Respondent registered and is using the domain name in bad faith. First, Respondent’s domain name resolves to a website that prominently offers to sell the domain name. Second, Respondent’s use of the domain to host competing hyperlinks is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). Third, because of the worldwide fame of Complainant’s MICHELIN mark, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein. Fourth, Respondent used a privacy shield when it registered the domain name. Finally, Complainant tried contacting Respondent through its privacy shield service and requested a response, but Respondent failed to respond.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Michelin North America, Inc. of Greenville, SC, USA. Complainant is the owner of domestic and international registrations for the mark MICHELIN, which it claims to have continuously used since1907, for goods and services relating to pneumatic tires, inner tubes, maps, guides, wheels, and other goods and services for vehicles. Complainant conducts business domestically and internationally from real space locations and also through cyberspace through utilization of its official website at <michelin.com>.
Respondent is Milen Radumilo, of Bucharesti, Romania. Respondent’s registrar’s address is listed as Jacksonville, FL, USA. The Panel notes that Respondent registered the domain name on or about September 14, 2016.
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 designs, manufactures, and markets tires for several vehicle industries, and is involved in vehicle racing and rallies. Complainant has registered the MICHELIN mark with the USPTO (e.g., Reg. No. 892,045, registered June 2, 1970), which Complainant contends demonstrates its rights in the mark. The Panel notes that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel here finds that Complainant has demonstrated its rights in its mark under Policy ¶ 4(a)(i).
Complainant argues that the <michelinpromo.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “promo” and the “.com” gTLD. Past panels have held that the addition of generic terms to a complainant’s mark does not serve to adequately distinguish a respondent’s domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Panels have also held that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (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.”). The Panel here finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant alleges that Respondent does not have any rights or legitimate interests in the domain name. According to Complainant, Respondent is not commonly known by the domain name, and Respondent is not a licensee of Complainant. The Panel notes that the WHOIS information merely lists “Milen Radumilo” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. The Panel finds that no basis exists in the available record to conclude Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant maintains that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant argues that Respondent’s domain name resolves to a website containing links to products that are directly competitive with Complainant’s business. Prior panels have held that a respondent’s use of a domain name to display links that are competitive with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts that Respondent used a privacy shield when it registered the domain name. Previous panels have held that a respondent lacks rights and legitimate interests in a domain name where the respondent used a privacy service when registering the domain name. See Michelin North America, Inc. v. Domain Admin/Whois Privacy Corp., FA1509001640108 (Forum October 31, 2015) (that Respondent registered the disputed domain name with a privacy shield service supports finding that Respondent has no rights or legitimate interests in the domain). The Panel here finds that Respondent lacks rights and legitimate interests in the domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s domain name resolves to a website that prominently offers to sell the domain name. Previous panels have found that a respondent’s attempt to sell a domain name can constitute evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See 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).”). The Panel here finds that Respondent registered and is using the domain name in bad faith.
Complainant maintains that Respondent’s use of the domain name to host competing hyperlinks is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). Prior panels have held that such use indicates bad faith. See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel here finds that Respondent’s use of the domain name constitutes bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <michelinpromo.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Nov. 16, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page