World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S.A. v. Eijiobara Obara

Case No. D2012-0047

1. The Parties

1.1 The Complainants are Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France and Michelin Recherche et Technique S.A. of Granges-Paccot, Switzerland, (the “Complainants”) represented by Dreyfus & associés, France.

1.2 The Respondent is Eijiobara Obara of Komae-shi, Japan (the “Respondent”).

2. The Domain Names and Registrar

The disputed domain names <goodrichtires.info>, <michelindealers.info>, <michelinhydroedge.info>, <michelinltx.info>, <michelintire.info>, and <michellintires.info> (the “disputed Domain Names”) are registered with GoDaddy.com, LLC. (the “Registrar”)

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2012. On January 13, 2012, the Center transmitted by email to GoDaddy.com, LLC, the Registrar, a request for registrar verification in connection with the disputed Domain Names. On January 13, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).

3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2012.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on February 14, 2012. 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.

4. Factual Background

4.1 The Complainants in these administrative proceedings are Compagnie Générale des Etablissements Michelin (Michelin) and its subsidiary, Michelin Recherche et Technique S.A.. Michelin own the trademark MICHELIN which is largely protected around the world in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides, and map publications. Michelin has also acquired an undisputable reputation in the automotive industry and in French gastronomy. The Michelin group through the subsidiary, Michelin Recherche et Technique S.A. also owns the BFGOODRICH trademark which is protected all over the world particularly in the tire manufacturing industry. The Michelin group also owns the domain name <michelin.com> and the domain name <bfgoodrich.com> through the subsidiary Michelin Recherche et Technique S.A.

4.2 The Respondent in this proceeding is based in Japan, and according to the Registrar all the disputed Domain Names were registered on May 28, 2011.

4.3 On June 8, 2011 those representing the Complainants dispatched a cease and desist letter to the Respondent and on the same day the Respondent replied and stated he could transfer the disputed Domain Names to the Complainants and enquired whether the payment of any compensation was possible.

5. Parties’ Contentions

A. Complainants

5.1 The Complainants own numerous MICHELIN and BFGOODRICH trademark registrations across the world including in Japan where the Respondent is located. The Complainants registered the MICHELIN trademark in Japan with registration number 0970990 on July 10, 1972 covering goods in class 12 and the BFGOODRICH trademark with registration number 1827004-2 on December 25 1985 also covering goods in class12. The trademark registrations for the two trademarks have been duly renewed until July 10, 2012 and December 25, 2015 respectively.

5.2 The Complainants submit that the disputed Domain Names are confusingly similar to the Complainants’ trademarks MICHELIN and BFGOODRICH because the disputed Domain Names reproduce the Complainants’ trademarks in their entirety with the mere addition of the generic and descriptive terms such as “ltx”, “hydroedge”, “tire”, “tires” and “dealers”. The Complainants submit further that the terms “ltx” and “hydroedge” refer to Michelin tire categories while the term “tire” refers to the product and “dealers” refers to the people offering the products for sale. The Complainants submit further that the addition of generic terms does not dispel the likelihood of confusion. In this regard the Complainants rely on the decision in Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom, WIPO Case No. D2011-0700.

5.3 With reference to two of the disputed Domain Names, namely <michellintires.info> and <goodrichestires.com>, where the Respondent has clearly repeated the letter “l” in the first disputed Domain Name and deleted the letters “bf” from the second disputed Domain Name, the Complainants submit that the mere addition and/or deletion of letters do not significantly affect the appearance or pronunciation of the disputed Domain Names as the Respondent is simply seeking to take advantage of potential typographical errors made by Internet users when inputting a website address into a web browser, a practice known as “typosquatting”. The Complainants in this regard rely on a number of cases including Compagnie Gervais Danone of Paris v. Jose Gregorio Hernadez Quintero, WIPO Case No. D2009-1050. Furthermore, the Complainants assert that the mere addition of the generic Top Level Domain (gTLD) suffix such as “info” to a disputed domain name is not sufficient to avoid a finding of confusing similarity as held recently in previous WIPO UDRP decisions including Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877.

5.4 The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names as the Respondent is not in any way affiliated to any of the Complainants and has never been authorized by the Complainants to use and register their trademarks or to register any domain names incorporating the Complainant’s trademarks. It is said that the disputed Domain Names are so identical to the Complainant’s famous trademarks that the Respondent cannot reasonably pretend that he was intending to develop a legitimate activity through the disputed Domain Names. The Complainants assert that the disputed Domain Names all resolved to parking web pages displaying commercial links related to tires and other products. Furthermore, it is argued that if the Respondent had a legitimate reason for registering the disputed Domain Names he would have replied to the cease and desist letter stating his interest instead of asking for compensation accordingly, the Respondent has so far failed to demonstrate use of, or preparations to use, the disputed Domain Names in connection with a bona fide offering of goods or services.

5.5 With regards to registration and use in bad faith the Complainants assert that it is impossible that the Respondent was unaware of the Complainants’ worldwide registered and protected trademark rights when he registered the disputed Domain Names. In this regard, the Complainants refer to previous WIPO UDRP decisions that have recognized the MICHELIN and BFGOODRICH trademarks as “well-known” or “famous” such as Compagnie Générale des Etablissements Michelin v. Mikhail Bulatckij, WIPO Case No. D2011-0473 amongst others. The Complainants further contend that the Respondent’s use of the disputed Domain Names to direct Internet users to web pages providing click-through revenues thereby exploiting the Complainants’ trademarks to generate commercial gain is evidence of bad faith use pursuant to the Policy. In this regard the Complainants rely on a number of cases including Teleperformance v. Venkateshwara Distributor Private Limited and PrivacyProtect.org., WIPO Case No. D2010-0685. In addition it is submitted that the Respondent’s use of the disputed Domain Names to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website is clear evidence of bad faith use.

5.6 The Complainants request that the disputed Domain Names be cancelled.

B. Respondent

5.7 The Respondent did not reply to the Complainants’ contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy to succeed in these administrative proceedings the Complainants must prove: (i) that the disputed Domain Names are identical or confusingly similar to the trademark or service marks in which the Complainants have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names; and (iii) that the disputed Domain Names have been registered and are being used in bad faith.

6.2 As expressly stated in the Policy, the Complainants must establish the existence of each of these three elements in these proceedings.

A. Identical or Confusingly Similar

6.3 The Panel finds from the unchallenged facts as presented by the Complainants that the disputed Domain Names are confusingly similar or identical to the Complainants’ exclusively owned trademarks, namely MICHELIN and BFGOODRICH. On a careful comparison of the disputed Domain Names and the Complainants’ trademarks it is patently obvious the disputed Domain Names wholly incorporate the Complainants’ trademarks. The Panel finds that the mere addition of generic and descriptive terms such as “ltx”, “hydroedge”, “tire” “tires” and “dealers” or the addition of the gTLD suffix “info” does absolutely nothing to prevent the likelihood of confusing similarity between the Complainants’ trademarks and the disputed Domain Names in the minds of Internet visitors. In this regard the Panel draws support for the following cases cited by the Complainants. First is the case of Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom, supra, where a confusingly similarity finding was made as the disputed domain name included the trademark or a confusingly similar approximation, regardless of the other terms of the disputed domain name. Secondly, see also Alstom v. Itete Peru S.A., supra, where the panel held that it is well-settled that the addition of either “com” or apt descriptive terms is insufficient to avoid a finding of confusing similarity.

6.4 Similarly, the Panel finds that the mere repetition of the letter “l” or the deletion of the letters “bf” in two of the disputed Domain Names namely <michellintires.info> and <goodrichtires.com> does not in any way significantly affect the appearance and pronunciation of the disputed Domain Names but simply enables the Respondent to exploit potential typographical errors made by Internet users when inputting a website address into a web browser. The Panel therefore finds that this practice commonly described as “typosquatting” again is insufficient to exclude a finding of confusing similarity. See in this regard Compagnie Gervais Danone of Paris v. Jose Gregorio Hernandez Quintero, supra, where the deletion of the letter “i” in the domain name <activa.biz> was held not to alter the confusing similarity between the domain name and the complainant’s registered trademark ACTIVIA.

6.5 Accordingly, the Panel is satisfied that the Complainant has established the disputed Domain Names to be confusingly similar to the Complainants’ registered trademarks and domain names in accordance with paragraph 4(a) of the UDRP Policy.

B. Rights or Legitimate Interests

6.6 The Panel also finds that the Respondent has failed to provide any concrete evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Names within the ambit of paragraph 4(c) of the Policy. As the Complainants assert, the Respondent has failed to produce evidence of any legitimate relationship between the Complainants and the Respondent or consent or any license issued to the Respondent by the Complainants authorising the Respondent to register and use any of the disputed Domain Names; therefore the Respondent has failed to establish a bona fide offering of goods and services contrary to paragraph 4(c)(i) of the Policy.

6.7 Furthermore, the Panel is satisfied that as the Respondent has knowingly registered the disputed Domain Names with the intention of misleading Internet visitors by creating a likelihood of confusion with the Complainants’ trademarks as to source affiliation or endorsement of the Respondent’ s website or of a product or service on the Respondent’s website, such usage by the Respondent cannot be said to constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed Domain Names. See generally, Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903 and Croatia Airlines d.d v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

6.8 Accordingly, the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the disputed Domain Names in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.9 On the question of bad faith registration and use, the Panel finds without any hesitation the Respondent registered the disputed Domain Names in bad faith. In arriving at this conclusion the Panel has taken into account a number of irrefutable factors. Firstly, it is implausible that the Respondent who is based in Japan can possibly claim to be unaware of the Complainants’ well-known registered trademarks also registered in 1972 and 1985 at the Japanese trademarks registry having decided to register the disputed Domain Names on May 28, 2011. See in this regard Compagnie Générale des Etablissements Michelin v. Mikhail Bulatckij, supra, a previous WIPO UDRP decision recognizing the well-known and famous feature of the MICHELIN and BFGOODRICH trademarks. Secondly, the Respondent has undoubtedly sought to engage in the well-known practice of “typosquatting” an act in itself which is evidence of bad faith use as decided in the previous WIPO UDRP decision of Westjet Airlines Ltd v. Taranga Services Property Ltd., WIPO Case No. D2010-1814. In addition the Panel finds that the Respondent’s exploitation of the Complainants’ well-known trademarks to attract Internet users to a website for commercial gain constitutes use in bad faith as also held in Teleperformance v. Click Cons. Ltd., WIPO Case No. D2008-0242 and Teleperformance v. Venkatesgwara Distributor Private Limited and PrivacyProtect.org., supra. Thirdly, as indicated at paragraph 5.7 above the Panel has drawn adverse inferences from the Respondent’s failure or refusal to challenge the evidence and submissions provided by the Complainants in this matter. Fourthly and finally, the Respondent’s enquiry into the possibility of being paid compensation by the Complainants upon receipt of the Complainants’ cease and desist letter is further evidence that the Respondent registered the disputed Domain Names in bad faith and for undue commercial benefit.

7. Decision

7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Names, <michelinltx.info>, <michelinhydroedge.info>, <goodrichtires.info>, <michelintire.info>, <michelindealers.info>, and <michellintires.info> be cancelled forthwith.

Ike Ehiribe
Sole Panelist
Dated: February 25, 2012

 

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