WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin (Michelin) v. Privacy Protection Service INC d/b/a PrivacyProtect.org / POLISPORT CO.

Case No. D2014-0136

1. The Parties

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

The Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org of Australia / POLISPORT CO. of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <michelinlastik.com> is registered with IHS Telekom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2014. On January 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 6, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 6, 2014.

On February 6, 2014, the Center sent an email communication to the parties in both English and Turkish regarding the language of the proceeding. On the same date, the Complainant requested English to be the language of the proceedings. The Respondent did not comment on the language of the proceeding by the specified due date.

On February 11, 2014, the Center received an informal email communication in English from the Respondent.

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 February 12, 2014. On the same date, the Center informed the parties that, given the provided submissions and circumstances of this case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Turkish; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on March 5, 2014.

The Center appointed Kaya Köklü as the sole panelist in this matter on March 12, 2014. 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

The Complainant is a renowned French company that is particularly specialized in tire manufacturing for the automotive industry. The Complainant’s group of companies is active globally in more than 170 countries with more than 100,000 employees.

The Complainant is the owner of the trademark MICHELIN, which is registered in a large number of jurisdictions, including in Turkey, where the Respondent is apparently located. The first trademark registrations date back to the 1960s (by way of illustration, International Trademark No. 348615 of July 24, 1968). Protection is claimed for a variety of products and services, inter alia, for the manufacturing and selling of tires.

Furthermore, the Complainant holds and operates various domain names incorporating the MICHELIN trademark, including <michelin.com> and, in Turkish language, <michelin.com.tr>.

The identity of the Respondent is unclear. It appears that the Respondent is a company from Istanbul, Turkey. However, the contact details in the WhoIs records for the disputed domain name are incomplete.

The disputed domain name <michelinlastik.com> was created on September 2, 2011.

According to the provided documents by the Complainant, it is indicated that the disputed domain name was used to direct Internet users to another Turkish website “www.neararsanburada.com”, meaning “whatever you search, it’s here” in the English language. At the time of the Decision, the disputed domain name was inactive.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark.

The Complainant argues that the only difference between the disputed domain name and the Complainant’s trademark is that the disputed domain name additionally comprises the generic Turkish term “lastik”. The Complainant is of the opinion that the addition of this generic term does not negate the confusing similarity with its trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its MICHELIN trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the MICHELIN trademarks in connection with a bona fide offering of goods and services.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that due to the notoriety of the MICHELIN trademark, the Respondent was or should have been aware of the MICHELIN trademark when it registered the disputed domain name.

B. Respondent

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

However, the Center received an email communication on February 11, 2014 from the Respondent in English language with a rather cryptic text. In this email communication, the Respondent in essence confirms that it uses the disputed domain name for commercial purposes and is not willing to transfer the disputed domain name as it believes that it now belongs to the Respondent.

No further communications have been filed by the Respondent.

6. Discussion and Findings

The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to formally respond to the Complaint or respond to the Center’s communication with regard to the language of the proceedings, even though communicated in Turkish and in English. The Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English, as the Respondent is probably capable to read, write and understand the English language. This is particularly likely as the Respondent sent an email communication to the Center on February 11, 2014 in English and has registered the disputed domain name with a privacy shield service located in Australia, where the official language is English.

According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights; and

(ii) the 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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the MICHELIN trademark of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights. As evidenced in the Complaint, the Complainant is the owner of a large number of word and figurative trademarks comprising the mark MICHELIN in many jurisdictions worldwide, including in Australia and Turkey.

Although not identical, the disputed domain name fully incorporates the Complainant’s MICHELIN trademark.

The disputed domain name differs from the MICHELIN trademark only by the addition of the generic Turkish term “lastik”, which means “tire” in English. In the Panel’s view, the addition of such generic term does not negate the confusing similarity between the Complainant’s trademark MICHELIN and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not create a new distinctiveness separate from the Complainant’s MICHELIN trademark. On the contrary, the full inclusion of the Complainant’s trademark in combination with the generic term “lastik”, which directly describes one of the main products offered by the Complainant, even enhances the false impression that the disputed domain name is officially related to the Complainant. The Panel concludes that the disputed domain name is likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.

Furthermore, the Panel notes that the mere addition of the generic Top-Level Domain (“gTLD”) “.com” has no distinguishing effect and may as a general principle not be considered when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the gTLD in a disputed domain name, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s MICHELIN trademark in the disputed domain name.

In the absence of a formal Response by the Respondent, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services. Even its email communication of February 11, 2014 does not indicate any such right or legitimate interest.

In fact, bearing in mind that the trademark MICHELIN is a term without a specific meaning, neither in English nor in Turkish language, and due to its worldwide notoriety the Panel finds it hard to conceive of any use of this trademark in combination with the descriptive term “lastik” by the Respondent, which would qualify as a legitimate use.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers with the Complainant’s MICHELIN trademark, apparently for commercial gain or any other illegitimate benefit.

First, the Panel believes that the Respondent must have been well aware of the Complainant’s trademarks when it registered the disputed domain name in September 2011. At the date of registration of the disputed domain name, the Complainant’s MICHELIN trademark was already well known worldwide, including in Turkey, for many decades.

Second, the Respondent preferred not to formally respond to the Complainant’s contentions, although being informed of the pending administrative proceedings by email and courier in Turkish and English. The Center merely received an email communication with a cryptic text from the Respondent, mainly stating that it is not willing to transfer the disputed domain name voluntarily.

Third, the Respondent tried to conceal its true identity by using a privacy shield service and providing inaccurate contact details in the WhoIs records for the disputed domain name. Even in its email communication of February 11, 2014, the Respondent did not reveal its true identity.

Finally, as indicated in the Complaint, the Respondent used the disputed domain name to direct Internet users to another website offering products within the field of business of the Complainant. The Panel assesses this conduct as a further indication of bad faith.

The fact that the disputed domain name is currently inactive does not change the Panel’s findings in this respect.

All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

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 <michelinlastik.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: March 26, 2014