World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev

Case No. D2012-0384

1. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.

The Respondent is Vyacheslav Nechaev of Yaroslavl, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <michelinua.com> is registered with Wild West Domains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2012. On February 27, 2012, the Center transmitted by email to Wild West Domains, LLC a request for registrar verification in connection with the disputed domain name. On February 27, 2012, Wild West Domains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 2, 2012.

The Center verified that the Complaint together with the amended 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”).

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 March 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2012.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on March 30, 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.

The language of the proceedings in English, being the language of the Registration Agreement.

4. Factual Background

The Complainant and its MICHELIN trademarks enjoy a worldwide reputation. Complainant owns numerous MICHELIN trademark registrations around the world, inter alia the following International Trademark Registrations notably designating the Russian Federation and Ukraine:

- MICHELIN, International Trademark No. 348615, dated July 24, 1968, duly renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;

- MICHELIN, International Trademark No. 492879, dated May 10, 1985, duly renewed and covering goods in class 12;

- MICHELIN, International Trademark No. 816915, dated August 27, 2003, and covering services in classes 35, 37, 39 and 42.

The Complainant operates, among others, domain names reflecting its trademarks, including <michelin.ua>,

<michelin.ru> created on November 20, 1998, and <michelin.com> created on December 1, 1993.

The trademark MICHELIN owned by the Complainant is protected in many jurisdictions around the world, specifically in the Russian Federation in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and map publications. The Complainant enjoys a reputation in the automotive industry and in French gastronomy. The Complainant is present in Eastern Europe, through eight plants, five passenger car and light truck tire facilities, three truck facilities, three specialty tire facilities and, as of February 2012, has 12,085 employees.

The Complainant is officially present in the Russian Federation since 1997 while its production is present on its market since 1904. In 2004, Michelin opened a plant in Davydovo which manufactures tires under the brands MICHELIN and BFGOODRICH. Today, the Complainant is especially focused on development of its network of tire retail stores Tyreplus in the Russian Federation, which included over 150 stores in mid-2011.

5. Parties’ Contentions

A. Complainant

The Complainant provides that its trademark MICHELIN is “well known” and “famous”, which has been also found in a number of previous UDRP decisions (see Compagnie Générale des Etablissements Michelin (Michelin) v. Rosa Chen, WIPO Case No. D2011-1326; Compagnie Générale des Etablissements Michelin (Michelin) v. Jorge Almeida, WIPO Case No. D2011-0147; and Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484) and a previous UDRP decision concerning the same disputed domain name Compagnie Générale des Etablissements Michelin v, Mikhail Bulateckij, WIPO Case No. D2011-0473).

The Complainant submits that the disputed domain name directs to a webpage which looks like an official website of the Complainant because it reproduces the trademark MICHELIN and its logo, the famous Bibendum (Michelin Man), the graphic charter of Michelin trademarks and websites (the blue background and yellow line). The webpage seems to offer Michelin tires for sale in Ukraine and contains a mention at the bottom “Web store of Michelin’s tires”. However, almost none of the links present on the webpage are functional, to the contrary those links redirect to corresponding pages in the archive of Wayback Machine Internet Archive. Thus, the webpage to which the disputed domain name resolves is most probably an imperfect copy of the source code of the former website which is available in the archives of Wayback Machine.

The Complainant further submits, that under the contact tab in the page header, there is an email address which probably belongs to the webpage’s owner or/and to the Respondent. The same email address appears on the website “www.vsesezonka.com.ua” (mentioned on the website at the disputed domain name) which is an Ukrainian online store offering for sale a wide range of tires of various brands, including the tires of the Complainant.

The Complainant sent a cease-and-desist letter to the Respondent on September 7, 2011, however, it remained unanswered to date.

It is the Complainant’s case that the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark MICHELIN, as the disputed domain name reproduces the Complainant's trademark in its entirety. It is widely considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark (RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059).

The disputed domain name features a term added to the trademark, which is “ua”. The mere adjunction of this term, in the Complainant’s view, is not sufficient to distinguish the disputed domain name from the Complainant’s trademark (see Sanofi- Aventis v. Sanofi, Octavio Lopez, WIPO Case No. D2010-1036; and Compagnie Générale des Etablissements Michelin (Michelin) v. BMtexnologiya MMC, Tural Malikov, WIPO Case No. D2010-2150). In addition to the above, the Complainant states that the addition of the term “ua” could be even more misleading since Internet users are more likely to believe that the site linked to the disputed domain name is the Complainant’s official site in Ukraine since the country code for Ukraine is “ua”.

Accordingly, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant’s trademark. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant.

The Respondent has no rights or legitimate interests in respect of the disputed domain since the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the MICHELIN trademark preceded the registration of the disputed domain name for many years. In many cases UDRP panels found that in the absence of any license or permission from the complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.

The Complainant further submits that the disputed domain name was registered and is being used in bad faith. This conclusion is based on the assumption that the Respondent must have been aware of the Complainant when it registered the disputed domain name. The Complainant further submits that the Respondent’s use of the disputed domain name will cause consumers to mistakenly believe that the disputed domain name is owned by the Complainant.

The Complainant notices that the disputed domain name directs toward a webpage which looks like an official website of the Complainant, while in fact this webpage is currently not operational. Nonetheless, such use of the MICHELIN trademark and logo on said webpage was not authorized by the Complainant. Consequently, in the absence of any license or permission from the Complainant to use such widely known trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed (Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281). Similarly reproducing famous trademarks in a domain name in order to attract Internet users to the Respondent’s own website cannot be regarded as fair use or use in good faith. Indeed, such conduct generates a strong likelihood of confusion for Internet users as to source, sponsorship, affiliation or endorsement of the website because the Respondent creates a website which imitates the Complainant’s official website. The Respondent’s behavior highlights its bad faith use of the disputed domain name (Compagnie Générale des Etablissements Michelin (Michelin) v. BMtexnologiya MM.CJurai Malikov, WIPO Case No. 2010-2150; and Groupe Auchan v. Bai Huiqin, WIPO Case No. D2009-0840).

The Complainants contends that the essence of bad faith use of a domain name under the UDRP is using a domain name which is confusingly similar to another’s trademark or service mark in order to divert web traffic for commercial gain using the goodwill built up by the owner of the trademark or service mark. Although the webpage connected to the disputed domain name is not functional since it constitutes an imperfect copy of the website that existed before and belong to the Complainant, it contains an email address of the person related to another online tire store “www.vsesezonka.com.ua” which, for its part, is perfectly functional and offers for sale the Complainant’s products as well as tires of its competitors.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy places a burden of production on the Complainant to prove the presence of three elements. These three elements can be summarized as follows:

(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in the disputed domain name; and

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

The Complaint may only be granted if each of the above criteria are met.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has proven that the disputed domain name <michelinua.com> is confusingly similar to the trademarks and service marks of the Complainant.

The confusing similarity of the disputed domain name <michelinua.com> to the Complainant’s MICHELIN trademarks and service marks is apparent from a simple visual comparison. The disputed domain name is almost a replica of the Complainant’s mark. The phrase “michelin” does not appear to have any generic meaning in any European language.

The disputed domain name <michelinua.com> incorporates a trademark owned by the Complainant. This is typically sufficient to satisfy the requirement that the disputed domain name is confusingly similar to a mark in which the Complainant has rights (see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 wherein the UDRP panel found that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”). Any added words, most obviously the suffix comprising the letters “ua” which may stand for the country code for Ukraine, or phrases do not cure this illegitimate use of the Complainant’s mark MICHELIN, nor are they sufficient to establish that the disputed domain name is not confusingly similar to the mark MICHELIN.

The Panel therefore finds that the disputed domain name <michelinua.com> is confusingly similar to the Complainant’s trademark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorised to use the Complainant’s marks. There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

Nonetheless, the Respondent was also given the opportunity to contest the Complainant’s prima facie case against it. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to, or legitimate interests in the disputed domain name <michelinua.com>.

The Panel therefore infers from the Respondent’s silence and the Complainant’s contentions that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the disputed domain name <michelinua.com>. The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.

C. Registered and Used in Bad Faith

The Complainant is the owner of the MICHELIN trademark. The Complainant is well known throughout the world. In previous UDRP decision, bad faith has been found where a domain name is so obviously connected with such a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).

Under paragraph 4(b)(iv) of the Policy a domain name is considered to be registered and used in bad faith if, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 website or location or of a product or service on its website or location.

Based on the evidence submitted by the Complainant, the Panel finds that the disputed domain name was registered and is being used in bad faith. It is apparent from the presented evidence that the website at the disputed domain name appears to be legitimate, but in fact seems to be practically inactive save for the information tab providing an email address, most probably, of the Respondent. Registration and use of the disputed domain name under which such a website exists is tantamount to registration and use of the disputed domain named in bad faith. Such registration and use is aimed at intentionally attracting for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.

Given the fact the Complainant’s trademark is famous and known worldwide and in the absence of evidence to the contrary, the Panel is persuaded that the Respondent knew of or should have known of the Complainant’s trademark and services at the time the Respondent registered the disputed domain name, and did so with a view to illegitimately take advantage thereof. It is well-established that knowledge of the Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name is highly indicative of bad faith registration (NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077; and ALSTOM v. Domain Investments LLC, WIPO Case No., D2008-0287).

As a result, the Panel finds that the disputed domain name <michelinua.com> was registered and is used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <michelinua.com> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Dated: April 4, 2012

 

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