WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Domain Admin, Private Registrations Aktien Gesellschaft
Case No. D2017-0096
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines (the "Respondent").
2. The Domain Name and Registrar
The disputed domain name <michelinrebates.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 18, 2017. On January 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2017, 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 January 19, 2017 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 January 24, 2017. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amendment Complaint on January 27, 2017.
The Center verified that the Complaint together with the amended Complaint and the second 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 21, 2017.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 24, 2017. 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 large tire manufacturing company with headquarters in Clermont-Ferrand, France.
The Complainant owns the following trademark registrations for MICHELIN:
- International trademark MICHELIN no. 348615, registered on July 24 24, 2001, duly renewed, covering goods in classes 1,6, 7, 8, 9, 12, 16, 17 and 20;
- International trademark MICHELIN no. 771031, registered on June 11, 2001, duly renewed, covering goods and services in classes 5, 7, 8, 9, 10 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42;
- International trademark MICHELIN no. 1049371, registered on August 25, 2010, covering goods in classes 7, 9 and 27.
The disputed domain name was registered on October 13, 2010. At the time of this decision the disputed domain name does not resolve to an active webpage. However, in accordance with the evidence submitted with the Complaint, the disputed domain name resolved to a parking website displaying commercial links related to the Complainant and its activities, and stating that the disputed domain name was for sale.
5. Parties' Contentions
With respect to the identity of the Respondent, Complainant asserts that there are two respondents: Privacy Protection Service INC d/b/a PrivacyProtect.org (the "First Respondent") and Domain Admin, Private Registrations Aktien Gesellschaft (the "Second Respondent"). Complainant states that the Second Respondent, is another privacy protection service (as is the First Respondent), which means that the disclosure of the identity of a Second Respondent has only created the chain of privacy shields, without revealing the true identity of the underlying registrant. . The Complainant decided to keep both Respondents, which will be subsequently referred to in the Decision as "the Respondent".
The Complainant's assertions may be summarized as follows:
(i) Identical or Confusingly Similar
The Complainant has been using the MICHELIN trademark in connection with a wide variety of products and services around the world. Further, several prior UDRP panel decisions have regarded the MICHELIN trademark to be "well-known" or "famous".
The disputed domain name is identical or at least confusingly similar to the Complainant's MICHELIN trademark.
(ii) Rights or legitimate interests
The Complainant states that the Respondent is not affiliated with the Complainant nor has it been authorized to use and register its trademarks, or to seek registration of any domain name incorporating the MICHELIN trademark.
The Complainant states that the disputed domain name is identical to the Complainant's famous MICHELIN trademark, so that the Respondent cannot reasonably pretend they were intending to develop a legitimate activity through the disputed domain name.
In addition, the disputed domain name resolves to a parking page displaying commercial links. Hence, it cannot be inferred that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain name. Moreover, in the upper part of the page on the disputed domain name, it can be seen that the disputed domain name is for sale.
Finally, the Respondent registered the disputed domain name with a privacy shield service to hide its identity and prevent the Complainant from contacting it. Such behavior highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) Registration and Use in Bad Faith
According to the Complainant, the disputed domain name was registered and is being used in bad faith.
The Complainant also asserts that because the Respondent, who had no rights or legitimate interests in the Complainant's MICHELIN trademark, knew or should have known about the Complainant's rights, bad faith can be found. Several UDRP panels have previously mentioned its worldwide reputation, making it unlikely that the Respondent was unaware of the Complainant's proprietary rights in the trademark. As the composition of the disputed domain name entirely reproduces the Complainant's trademark MICHELIN, with the association of the term "rebates", the latter referring to usual offers made from various producers, and it resolves to a parking page consisting of links relating to the Complainant's field of activity, it is impossible that the Respondent did not have this trademark and company name in mind while registering the disputed domain name.
The Complainant claims that bad faith has already been found where a domain name is so obviously
connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith.
The Complainant claims that the Respondent uses the disputed domain name to direct Internet users to webpages displaying pay-per-clicks links which are likely to generate revenue, taking undue advantage of the Complainant's trademark. Previous UDRP panels have held that the use of a domain names to divert Internet users and to direct them to a webpage providing the Respondent with revenue through clicks evidences bad faith.
The Complainant claims it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name.
Finally, the Complainant claims that the Respondent's immediate offer to sell the domain name for a sum of USD 999 (which is in excess of the Respondent's out of pocket expenses in registering the disputed domain name) despite having been summoned to transfer it to the Complainant free of charge through a cease and desist letter, without giving any reasons why it has registered the disputed domain name and without contesting the Complainant's trademark, are clear indications of bad faith.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant has established that it is the registered owner of various trademark registrations for its MICHELIN trademarks, which is wholly incorporated in the disputed domain name. It is well accepted that the addtition of generic terms like "rebates" or the generic Top-Level Domain ".com" is typically disregarded when assessing confusing similarity.
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods and services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Complainant's trademarks. The Complainant has prior rights in the trademarks which precede the Respondent's registration of the disputed domain name by several decades. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 and cases cited therein.
Respondent has failed to rebut the Complainant's contentions, to show that it has acquired any rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
The Panel finds, also in view of the Panel's findings below, that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant is well-known. The Panel considers that it is very likely that the Respondent knew of the Complainant especially given the Complainant's worldwide reputation (Compagnie Générale des Etablissements Michelin v. Way Su, WIPO Case No. D2016-2221; Compagnie Générale des Etablissements Michelin v. Shuitu Chen, WIPO Case No. D2016-1924; Compagnie Générale des Etablissements Michelin v. Mark Hill, WIPO Case No. D2015-2274; and Compagnie Générale des Etablissements Michelin v. zhouhaotian, WIPO Case No. D2015-1728).
In accordance with the evidence submitted with the Complaint, the disputed domain name resolved to a parking website displaying commercial links, the majority of them related to the Complainant and its activities. This is evidence of bad faith use as described under paragraph 4(b)(iv) of the Policy.
Furthermore, the Panel notes that at the time of this Decision the disputed domain name resolves to an inactive website.
Passive holding of the disputed domain name coupled with the fame of the Complainant's MICHELIN trademark does not avoid a bad faith finding. "It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003)". Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.
The Panel also takes into account that:
- the Respondent registered the disputed domain name with two privacy services to hide its identity and prevent the Complainant from contacting him;
- the Respondent offered to sell the disputed domain name for a price of USD 999. This is clear evidence of bad faith registration.
Given the foregoing, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <michelinrebates.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: March 10, 2017