WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Compagnie Gnrale des Etablissements Michelin CGEM - Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc.

Case No. D2004-0752

 

1. The Parties

The Complainants are Compagnie Gnrale des Etablissements Michelin CGEM - Michelin & Cie, of Clermont Ferrand, France, and Michelin Recherche et Technique S.A., Granges Paccot, Switzerland, both represented by Domain Network SAS, France.

The Respondent is Horoshiy, Inc., of Curacao, Netherlands Antilles, Netherlands.

 

2. The Domain Names and Registrar

The disputed domain names <goodrichtire.com> and <michelline.com> are registered with NameKing.com Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on September16,2004. On September17,2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. On September29,2004, and October1,2004, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. After verifying the registration of the Domain Names with the Registrar, the Center requested on October7,2004, that the Complainants amend their Complaint in order to submit the proceeding to a Mutual Jurisdiction as required by paragraph 3(xiii) of the Rules. Accordingly, an Amendment was received by the Center by e-mail on October 7,2004. In addition to the amended Mutual Jurisdiction, the Complainants also corrected the name of the Registrar for the domain name <michelline.com>. Since the Amendment was received by the Center before the Respondent was given formal notice of this proceeding, the Respondent was not prejudiced by any of the alterations, and the Panel will consider the Complainants’ contentions as expressed in the Complaint as amended. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the Amendment, and the proceedings commenced on October12,2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November1,2004. It is to be noted that the Complaint together with the Amendment has been notified to the Respondent in electronic form by e-mail to three e-mail addresses, and by postal mail according to paragraph 2(a) of the Rules. One of the e-mail seems to have reached the Respondent. Further, the postal mail was returned with the mention “incorrect address”. Thus, the Panel considers that the Center has complied with the requirements of Paragraph 2(a) of the Rules, i.e. “to employ reasonably available means calculated to achieve actual notice to Respondent”.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November3,2004.

The Center appointed Christian Pirker as the sole panelist in this matter on November15,2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

After reading the Complaint, the Panel noted that the Complainants allege that they are holders of numerous trademarks for the words “MICHELIN” and “BFGOODRICH” but without submitting formal evidence. Therefore, the Panel requested that the Complainants submit originals or copies of the original alleged trademark registrations. The response to this Administrative Panel Order No. 1, issued on November26,2004, was to be sent to the Center and the Respondent by e-mail and in hardcopy. The Complainants had until December3,2004, to submit their response to this Order. The faxed copies were received by the Center on December3,2004. However, the copies were incomplete sets. The mailed version was received by the Center on December8,2004. The mailed version was forwarded to the Panel on December9,2004. Accordingly, the Panel extended the due date of the Decision to January17,2005.

 

4. Factual Background

Created on May28,1889, the Michelin group is a well-known group represented in more than 170 countries that designs, manufactures and markets tyres for several vehicle industries (car, truck, aviation…). It is also highly involved into vehicle racing (Formula One and Motorcycle Grand Prix, Super bike…) and rallies. Michelin Recherche et Technique S.A is a Michelin Group subsidiary charged to promote and coordinate studies and its results that may interest one of the Michelin Group Companies.

The Michelin group has used and promoted its MICHELIN trademark for about a century and owns worldwide numerous trademark registrations for the word “MICHELIN”, inter alia in class 12 for pneumatic tires. The MICHELIN Trademark may be considered as a well-known trademark among consumers of tyres and automoble uses.

The BF GOODRICH Trademark is the second line trademark of the Michelin Group. Following the transfer of the trademark, Michelin Recherche et Technique S.A. has also used and promoted the BF GOODRICH trademark for a certain period of time. It is alleged by the Complainant that it owns worldwide numerous trademark registrations identical and/or containing the word “BFGOODRICH” protected in Class 12 for pneumatics and tires. Nevertheless, in view of the evidence submitted, the Panel considers that Michelin Recherche et Technique S.A owns at least two valid trademark certificates, i.e. Argentina and Bulgaria, since the other certificates are apparently incomplete, illegible or unclear. It must be noted that even if these two certificates are sufficient to attest trademark rights under the UDRP, it would have been easier for the Panelist if the Complainant had produced its evidence in a more structured way. Further, the BF GOODRICH Trademark may also be considered as a known trademark among the tyres consumers and in the automotive area.

The domain names <michelline.com> and <goodrichtire.com> were registered respectively on February11,2004, and March13,2004. Both domain names are currently used for websites directories in order to redirect consumers to numerous other websites offering the same type of products and services as those provided by the Michelin Group.

The domain names <goodrichtire.com> and <michelline.com> have been transferred (the latter in June3,2004) from Henry Chan to the Respondent. It must be noted that Mr. Chan was cited as Respondent in numerous cases involving more than one hundred domain names. As far as the Panel is aware, the disputed domain names in question were eventually transferred to the relevant complainants.

Moreover, Horoshiy Inc. has been regularly involved this last month in domain name disputes. As far as the Panel is aware, Horoshiy Inc. has always been in default, and the disputed domain names have all been transferred to the relevant complainants (inter alia Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795).

 

5. Parties’ Contentions

A. Complainants

The Complainants allege that they own numerous registrations of the “MICHELIN” and “BFGOODRICH” marks, that they registered and used numerous domain names, including the names “MICHELIN” and “BFGOODRICH”, and that the Respondent has registered and used the disputed domain names which are confusingly similar to the Michelin Group’s Trademarks.

The Complainants specify that they have no connection whatsoever with the Respondent, nor that the Respondent has business or any other connection or affiliation with the Complainants, nor that the Complainants have licensed, expressly or impliedly, or otherwise permitted the Respondent to use the trademarks “MICHELIN” and “BFGOODRICH” or to apply for any domain name incorporating the MICHELIN trademark and part of the “BFGOODRICH” trademark. The Complainants further allege that they have not found any other facts or elements to justify prior rights or legitimate connections of the Respondent to the names MICHELIN and BFGOODRICH, nor that the Respondent was otherwise known to the Complainants or to the public under these names, either in business or personally. The Complainants also allege that the Respondent does not use the domain names <michelline.com> and <goodrichtire.com> for a legitimate non-commercial or fair use, but registered them for the sole purpose to divert Internet users from the Michelin official websites. In addition, the service offered by the Respondent does not consist in a “bona fide” offering of goods or services, because the Respondent has used somebody else’s trademark as a domain name, despite having no rights to said trademarks, to attract customers who were looking for products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. Accordingly, the Complainants allege that the Respondent has no legitimate interest in the domain names <michelline.com> or <goodrichtire.com>.

Finally, the Complainants contend that the Respondent has registered and is using the domain names in bad faith since the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainants’ marks.

Accordingly, the Complainants request the Administrative Panel to issue a decision that the domain names <michelline.com> be transferred to Michelin and <goodrichtire.com> to Michelin Recherche et Technique S.A.

B. Respondent

As noted above, the Respondent is in default pursuant to Paragraph5(e) and14 of the Rules, and Paragraph7(c) of the Supplemental Rules, as no Response was submitted in due time.

It is further noted that the Respondent did not give any response nor communicated any message at any time in the course of the present proceedings.

Under Paragraphs 5(e) and 14(a) of the Rules, the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under Paragraph 14(b), the Panel is empowered to draw such inferences from Respondent’s default as it considers appropriate under the circumstances.

 

6. Discussion and Findings

6.1. Procedural discussion and Findings

Neither the Policy nor the Rules provide for multiple Complainants, and no uniform practice seems to existon this issue. It is Panel’s opinion that multiple Complainants should be admissible when there exists sufficient connections both between the cases and between the Parties, and when it seems preferable that a dispute concerning domain names be decided in a single proceeding than in a multiplicity of proceedings (inter alia Socit Gnrale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760). Accordingly, the Panel considers that in the case at hand, the designation of a parent company and one of its subsidiaries as Complainants is acceptable since the Respondent’s domain names lead to the same type of website, and since the Respondent is holder of both domain names which are confusingly similar to the trademarks owned by the parent company and/or its subsidiary.

6.2. On the merits

Paragraph 15(a) of the Rules instructs the 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 states that the Complainant must prove that each of the three following elements are present:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant have rights; and

(ii) that the Respondent has no rights nor legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

A. 1. <michelline.com>

The MICHELIN trademark is registered in numerous countries, in class 12, for “pneumatic tyres and tubes for pneumatic tyres”. As analysed in a similar case (Go Daddy Software, Inc. v. Henry Tsung, WIPO Case No. D2004-0980), the disputed domain name is <michelline.com>, and the question is therefore whether that name is identical or confusingly similar to the Complainant’s trademark MICHELIN. The addition of the letters “l” and “e” in the domain name means that it is not literally identical to the trademark. However, previous Panels have decided that ‘essential’ or ‘virtual’ identity is sufficient: The Stanley Works and Stanley Logistics, Inc v. Camp Creek Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v. Nokiagirls.com WIPO Case No. D2000-0102. Applying that test, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark, since it is essentially or virtually identical to it. First, the Panel finds that the adding of the letters “l” and “e” is only a minor alteration of the word that does not change the overwhelming impression of similarity. Second, the pronunciation of the domain name and the trade name is globally similar, especially in English. Third, the disputed name is so confusingly similar that an Internet user could, and the Panel draws the inference that some have and others will, accidentally type the contentious domain name, although meaning to type the domain name of the Complainant. The Panel has no hesitation in saying that an objective third party would consider that the domain name is very similar to the trademark, and that the one would be very likely to be confused with the other (see also The Toronto Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, Yahoo! Inc. v.Eitan Zviely et al , WIPO Case No. D2000-0273). Consistent with these and other decisions, the Panel has no hesitation in concluding that the domain name is virtually identical to the trademark and certainly confusingly similar to it.

A. 2. <goodrichtire.com>

The “BF GOODRICH” trademark is registered in some countries in class 12, for “pneumatic tires and tubes for pneumatic tires”. As analysed above, the disputed domain name is <goodrichtire.com>, and the question is therefore whether that name is identical or confusingly similar to the Complainant’s trademark “BF GOODRICH”. Previous Panels have decided that ‘essential’ or ‘virtual’ identity is sufficient: The Stanley Works and Stanley Logistics, Inc v. Camp Creek Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v. Nokiagirls.com WIPO Case No. D2000-0102. In the present case, the essential part of the <BF GOODRICH> trademark appears to be the word “Goodrich”. Accordingly, this word in its entirety is included in the disputed domain name. Moreover, the adjunction of the word “tire” to the name “Goodrich” in the domain name does not diminish the confusing similarity between the domain name and the trademark, since the essential part of the disputed domain name and the trademark is the term “Goodrich” and the word “tire” is a descriptive term. Domain names that combine a descriptive term with another’s trademark have been held to be confusingly similar to the trademark. See, e.g., AT&T Corp. v. WorldclassMedia.com, WIPO CaseNo.D2000-0553; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627. It further appears to the Panel that adding the term “tire” to the essential part of the trademark increases the likelihood of confusion. Consistent with these and other decisions, the Panel has no hesitation in concluding that the domain name is essentially identical to the trademark and certainly confusingly similar to it.

In view of the above, the Panel holds that both domain names are confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a Respondent can establish its rights or legitimate interests in its Domain Name if it shows the presence of any of the following circumstances:

(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] 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.

It is for the Complainant to demonstrate that this condition is met prima facie. Provided that the Complainant is successful in establishing such prima facie condition, it is for the Respondent to answer thereto.

The Complainants allege that the Respondent has no connection whatsoever with them, and that the Respondent has no right or legitimate interest in the domain name and does not appear to be known by a name corresponding to the Domain name.

Taking into consideration the fact that this condition consists of furnishing evidence of the non-existence of a material fact, the Panel considers that the Complainant has fulfilled its obligations under this paragraph.

As stated above, the Respondent failed to respond to the Complaint. The Panel will therefore draw such inferences as it considers appropriate under the circumstances (paragraphs 5(e) and 14 (a) of the Rules).

Since the Respondent has not challenged the Complainants’ contentions, the Panel finds them credible.

Accordingly, the Panel considers that the Respondent does not have any right or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

The third element to be established by the Complainants is that the domain names have been registered and are being used in bad faith.

Paragraph 4(b) states the following four (non-exclusive) circumstances, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name.

(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or

(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or your location.

The Panel notes that some panelists in certain default cases have accepted allegations as true with little supporting evidence, particularly under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, regarding the factors that make out illegitimacy of a respondent’s use or the presence or absence of bad faith, e.g., Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182; Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039; Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939, either as a tacit admission by the Respondent or as within a Panel’s authority under Rule 14(b).

For this reason only, the Complainants’ allegations that the disputed domain names have been registered and used in bad faith can be accepted as true. That being said, the Panel further holds the following:

First, the “MICHELIN” trademark is a worldwide well-known trademark and the “BFGOODRICH” mark is also known among consumers of tyres and in the automotive area. Second, both Complainants’ trademarks are included, essentially, in the disputed domain names. Third, the Respondent added the term “tyres” to the trademark “GOODRICH”, which shows a knowledge of the products commercialised by the Complainant. Finally, the initial registrant, Mr. Henry Chan, and the current registrant and Respondent, Horoshiy, Inc. are regular Respondents in similar cases. In light of these circumstances, the Panel is convinced that the choice of the domain names by the Respondent is not a coincidence, and therefore that the domain names have been registered in bad faith.

The domain names must not only be registered in bad faith, but they must also be used in bad faith (e.g. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001).

The Panel considers that the disputed domain names are used for “click-through” revenue generating sites which provide income to the Respondent by inducing Internet users to click through to sponsored links. It is the Panel’s opinion that the purpose of the Respondent’s use of domain names containing the Complainants’ famous trademarks is merely to capture the Complainants’ customers who are seeking the Complainants’ products and/or services, and to re-direct them to other websites. Such use of domains is neither legitimate, nor of good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy, Paragraph 4(b)(iv).

The Panel finds that the circumstances in this case lead to the conclusion of bad faith use for the following reasons:

- The choice of both domain names by the Respondent could hardly be a coincidence.

- The disputed domain names lead customers or potential customers of the MICHELIN or BF GOODRICH products to believe that they will find, on the Respondent’s Internet website, information on Complainants’ products or services.

- The Respondent’s use of the domain name has no relation to the Complainants’ activities except for misleading and diverting potential customers of the Complainants to the Respondent’s website or related website.

- It seems that the Respondent provided false contact details; it appears that the postal-mail address seems to be wrong since the documents sent to the Respondent were returned with the mention “incorrect address”.

- In the last months, the Respondent has been cited as respondent in numerous other cases, in which the disputed domain names were eventually transferred to the relevant complainants.

- Finally, the Respondent did not actively participate in the proceedings.

As a result, the Panel holds that both elements of paragraph4(a)(iii) of the Policy have been met. The Panel thus concludes that the Complainants have established that the Respondent registered and use the disputed domain names in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <michelline.com> be transferred to Compagnie Gnrale des Etablissements Michelin CGEM - Michelin & Cie and that the domain name <goodrichtire.com> be transferred to Michelin Recherche et Technique S.A.


Christian Pirker
Sole Panelist

Dated: January17,2005