World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin (Michelin), Michelin Recherche et Technique S.A. v. Santiago Holdings Ltd, PrivacyProtect.org

Case No. D2012-0635

1. The Parties

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

Respondents are Santiago Holdings Ltd of Santiago, Chile and PrivacyProtect.org of Nobby Beach, Australia.

2. The Domain Names and Registrar

The disputed domain names <brgoodrich.com>, <michelindealer.com> and <michlein.com> are registered with Power Brand Center Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2012. On March 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 3, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 18, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 27, 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 Respondent of the Complaint, and the proceedings commenced on May 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 23, 2012.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 5, 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

Complainant is the owner of registrations for the word trademarks MICHELIN and BFGOODRICH. Complainant in particular refers to registration of the term MICHELIN on the register of IP Australia, registration number 879562, dated June 4, 2002, in international classes (ICs) 5, 6, 7, 8, 9, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, and 42, covering, inter alia, machines for mounting and dismounting tires, and travel services, and; international registration under the Madrid System, registration number 348615, dated July 24, 1968, designating 47 countries, in ICs 1, 6, 7, 8, 9,12,16, 17 and 20, covering, inter alia, articles manufactured from natural and synthetic rubber; and maps, guides and all works or publications. Complainant in particular refers to registration of the term BFGOODRICH on the register of the French National Institute of Industrial Property (INPI), registration number 3447866, dated August 29, 2006, in IC 12, covering, inter alia, vehicle tires.

Complainant is a multinational enterprise producing and distributing, inter alia, tires for automotive vehicles and hotel/restaurant guides and maps, under the MICHELIN trademark. Complainant maintains an active commercial Internet website at “www.michelin.com”. The aforesaid website reflects the global presence of Complainant in the automotive tire and travel services markets. Complainant has provided evidence of its long-standing presence in the Australian and Chilean markets through the marketing and sale of automotive tires.

Complainant’s BFGOODRICH trademark, according to its 2010 Annual Report, is “A primary brand dedicated to sports cars and SUVs”. Complainant widely advertises its BFGOODRICH tires.

Complainant has submitted limited direct evidence in this proceeding that would establish a well-known character for its MICHELIN and BFGOODRICH trademarks. It has, instead, relied on several previous panel decisions under the UDRP to support a claim that these marks are well-known. At least one of these decisions, Compagnie Generale des Etablissements Michelin, Michelin et Cie, Michelin Recherche et Technique S.A. v. Alvaro Collazo, WIPO Case No. D2004-1095, refers to substantial evidentiary support in reaching the conclusion that the aforesaid trademarks are well-known.

According to the registrar’s verification, Respondent is the registrant of the disputed domain names. According to that report, the record of registration of the disputed domain name <brgoodrich.com> was created on October 10, 2004; the record of registration of the disputed domain name <michelindealer.com> was created on October 10, 2010, and; the record of registration of the disputed domain name <michlein.com> was created on October 11, 2002.

Respondent has used the three disputed domain names to direct Internet users to “link farm” webpages that principally include links to sellers of automotive tires and related automotive products. These links connect to persons offering to sell products of Complainant and its competitors, including, for example, sellers of Goodyear brand tires. The specific content of the links differs depending upon the country in which the disputed domain name is entered into a browser, but the general content of the results is similar. That is, links are primarily to persons offering tires and related automotive products, both of Complainant and its competitors.

Complainant transmitted a cease-and-desist-and-cancellation demand to the privacy service Respondent, Privacyprotect.org, via e-mail and online form, dated July 4, 2011, along with a follow-up e-mail of July 13, 2011. Complainant did not receive a response to its demand.

The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the trademarks MICHELIN and BFGOODRICH as evidenced by registrations in numerous countries, including Australia, where one of the Respondents is located. Complainant argues that it has long used the aforesaid trademarks in commerce, and that the trademarks are well-known.

Complainant contends that the disputed domain names are confusingly similar to its trademarks. Complainant argues that the disputed domain name <michelindealer.com> combines its well-known trademark with a descriptive term for a professional offering products for sale, and that this is insufficient to distinguish the disputed domain name from its trademark. Complainant argues that the disputed domain names <brgoodrich.com> and <michlein.com> are close typographical variations of its well-known trademarks that seek to take advantage of Internet user misspellings to redirect them to Respondent’s websites for commercial gain (i.e., the practice known as “typosquatting”).

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names because: (1) Respondent is not in any way affiliated with Complainant or its trademarks; (2) Respondent has no prior rights or legitimate interests in the disputed domain names; (3) Respondent has not been commonly known by Complainant’s trademarks or the disputed domain names, nor has it been licensed to use them; (4) Respondent has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services; pay-per-click parking pages do not constitute bona fide offerings of goods or services; (5) typosquatting does not constitute legitimate use of the trademarks, and; (6) Respondent’s failure to respond to Complainant’s cease-and-desist demand is evidence of a lack of rights or legitimate interests.

Complainant contends that Respondent registered the disputed domain names in bad faith because: (1) Respondent must have been aware of Complainant’s well-known trademarks when it registered the disputed domain names; (2) the fact of registering a third party’s well-known trademarks evidences bad faith; (3) a quick trademark search would have revealed the existence of Complainant’s trademarks; (4) typosquatting in relation to well-known trademarks evidences bad faith, and; (5) under the circumstances of the case, use of a privacy service evidences bad faith. Complainant argues that Respondent is using the disputed domain names in bad faith because: (1) Respondent is using the disputed domain names which are confusingly similar to its trademarks in order to divert web traffic for commercial gain using the goodwill built up by Complainant; (2) Complainant’s trademarks are well-known and Respondent must have been aware of them when it registered the disputed domain names; (3) diversion of Internet users to pay-per-click links represents commercial use of the disputed domain names.

Complainant requests the panel to direct the Registrar to cancel the disputed domain names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its records of registration. Respondent did not reply to e-mail notification. The express courier delivery service engaged by the Center appears to have delivered the Complaint to Respondent’s physical address in Australia, but was apparently unable to complete physical delivery in Chile. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

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

(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided substantial evidence of rights in the trademarks MICHELIN and BFGOODRICH including registration in various countries, among them Australia (MICHELIN) and France (BFGOODRICH). Complainant has provided substantial evidence of use of the trademarks in commerce. Respondent has not challenged the validity of Complainant’s trademark registrations, or its rights in the trademarks. The Panel determines that Complainant has rights in the trademarks MICHELIN (in Australia, among other countries) and BFGOODRICH (France).

The disputed domain name <michelindealer.com> directly incorporates Complainant’s MICHELIN trademark and adds the term “dealer”. The term “dealer” refers to a person that trades in goods or services.1 The combination of a common descriptive term that Internet users would expect to be associated with Complainant’s products with Complainant’s distinctive trademark does not distinguish the disputed domain name from the trademark from the standpoint of the Policy. The Panel determines that <michelindealer.com> is confusingly similar to Complainant’s MICHELIN trademark.2

The disputed domain name <brgoodrich.com> represents a single letter variation from Complainant’s BFGOODRICH trademark. Because BFGOODRICH is a unique distinctive term, and the disputed domain name <brgoodrich.com> has no apparent independent meaning or usage, it is reasonable for the Panel to infer that the single letter variation is intended by Respondent to take advantage of Internet user typing errors to divert traffic to its link farm webpage. The Panel concludes that the disputed domain name <brgoodrich.com> is confusingly similar to Complainant’s BFGOODRICH trademark.

The disputed domain name <michlein.com> transposes the “e” and “l” of Complainant’s MICHELIN distinctive trademark. Respondent has provided no explanation or justification for use of the term “michlein” in the disputed domain name, and the term has no apparent independent meaning or usage. The Panel draws the inference that Respondent registered this disputed domain name intending to take advantage of Internet user misspellings of Complainant’s distinctive trademark. The Panel concludes that the disputed domain name <michlein.com> is confusingly similar to Complainant’s MICHELIN trademark.

The Panel has determined that Complainant has rights in the BFGOODRICH trademark, and that the disputed domain name <brgoodrich.com> is confusingly similar to that trademark. The Panel has determined that Complainant has rights in the MICHELIN trademark and that the disputed domain names <michelindealer.com> and <michlein.com> are confusingly similar to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you 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.” (Policy, paragraph 4(c))

Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Respondent is not in any way affiliated with Complainant or its trademarks; (2) Respondent has no prior rights or legitimate interests in the disputed domain names; (3) Respondent has not been commonly known by Complainant’s trademarks or the disputed domain names, nor has it been licensed to use them; (4) Respondent has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services; pay-per-click parking pages do not constitute bona fide offerings of goods or services; (5) typosquatting does not constitute legitimate use of the trademarks, and; (6) Respondent’s failure to respond to Complainant’s cease-and-desist demand is evidence of a lack of rights or legitimate interests. Complainant has made a prima facie demonstration that Respondent lacks rights or legitimate interests in the disputed domain names.

Respondent has not provided any explanation or justification for registration and use of the disputed domain names, or any basis on which the Panel might find that Respondent has rights or legitimate interests in the disputed domain names.

Respondent’s only use of the disputed domain names on the record of this proceeding is in connection with establishment and maintenance of “link farm” webpages that offer to direct Internet users to providers of goods and services that include various direct competitors of Complainant in the market for automotive tires and related products. Respondent is using Complainant’s distinctive trademarks to direct Internet users to the products of competitors of Complainant. This is not a fair commercial use of Complainant’s trademarks, and it does not constitute a bona fide offering of goods or services. In the absence of other evidence that might establish rights or legitimate interests, Respondent has failed to rebut Complainant’s prima facie demonstration of lack of rights or legitimate interests.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Among those circumstances are: (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”

Respondent registered three disputed domain names incorporating Complainant’s distinctive trademarks, and has used those disputed domain names solely for the purpose of directing Internet users to link farm webpages offering goods and services directly competitive with those of Complainant. It is reasonable to infer that Respondent is earning pay-per-click revenues from these link farm webpages. It appears to the Panel that Respondent is using the disputed domain names to attract for commercial gain Internet users to Respondent’s websites by creating a likelihood of confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s websites.

The Panel determines that Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Per the request of Complainant, the Panel will direct the Registrar to cancel the disputed domain names.

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 names, <brgoodrich.com>, <michelindealer.com> and <michlein.com>, be cancelled as requested.

Frederick M. Abbott
Sole Panelist
Dated: June 9, 2012


1 See, e.g., http://www.merriam-webster.com/dictionary/dealer, defining the root term “deal” at 3b to mean “to sell or distribute something as a business”.

2 Under circumstances such as those presented for the three disputed domain names in this case, inclusion of the generic top-level domain identifier “.com” does not affect analysis of substantial similarity within the meaning of the Policy.

 

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