WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Balticsea LLC
Case No. D2017-0308
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Balticsea LLC of Kaliningrad, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <michlintires.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2017. On February 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2017 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.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2017.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on March 27, 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 leading company in the tires sector, headquartered in Clermont-Ferrand, France, which is present in more than 170 countries worldwide, including in the Russian Federation. It is best known for the manufacture and commercialization under the trademark MICHELIN of tires for a range of vehicles, including airplanes, automobiles, bicycles/motorcycles, earthmovers, farm equipment and trucks. Further, it publishes travel guides, hotel and restaurant guides, maps and road atlases, as well as offering electronic mobility support services and other related services, provides safety courses and hosts various social events, particularly in the Russian Federation, and supports various social projects under its foundation “Fund Michelin Davydovo”.
The Complainant uses the mark MICHELIN to identify its products, as well as its commercial network and its website, holding several trademark registrations throughout the world for this mark. In particular, among others, the Complainant holds International Trademark Registration No. 348615 for MICHELIN in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20, designating the Russian Federation, which was registered on July 24, 1968, and International Trademark Registration No. 492879 for MICHELIN in class 12, designating the Russian Federation, which was registered on May 10, 1985.
Further, the Complainant owns several domain names reflecting the mark MICHELIN, which are used to promote its goods and services: among others, <michelin.com>, which was registered on December 1, 1993, <michelin.net>, which was registered on March 8, 2000, and <michelin.ru>, which was registered on November 20, 1998.
The disputed domain name was registered on November 26, 2005. It previously directed to a parking page displaying sponsored links, and is currently inactive.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is confusingly similar to its mark MICHELIN, for which it claims well-known character and reputation. The disputed domain name substantially imitates the Complainant’s mark, omitting only the letter “e”, which constitutes a practice commonly referred to as “typosquatting”. Therefore, it nearly reproduces the Complainant’s mark as its most dominant beginning element, followed by the generic term “tires”, which does not diminish the similarity between the trademark and the disputed domain name. On the contrary, the generic term “tires” increases the likelihood of confusion as it refers to the Complainant’s main field of activities and products. Furthermore, the mere adjunction of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant as the gTLD is insufficient to avoid a finding of confusing similarity, and the worldwide extensive use of the Complainant’s mark may contribute to increase the likelihood of confusion and association.
The Complainant further asserts that the initial registrant of the disputed domain name was Contact Privacy Inc., an anonymous service provider. After some exchanges with the privacy service, it revealed the identity of the Respondent, and before starting the UDRP proceeding, the Complainant tried to resolve this matter amicably, but the Respondent never replied to its communications. However, the use of the disputed domain name changed upon receiving the first cease-and-desist letter to direct towards a parking page displaying sponsored links in the field of tires, and afterwards its use changed again to a blank or inactive page.
Furthermore, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The registration of the trademark MICHELIN preceded the registration of the disputed domain name for years and the Respondent is not affiliated with the Complainant in any way, nor has it been authorized by the Complainant to use and register this trademark, or to seek registration of any domain name incorporating said mark. Besides, the disputed domain name has changed direction several times, from a blank or inactive page to a parking page and back to a blank or inactive page again, and it is offered for sale in Afternic for a minimum price USD 400. All these three factors combined together show that the Respondent does not have rights or legitimate interests in the disputed domain name, nor has it made any reasonable and demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name.
Instead, considering that the disputed domain name is offered for sale, the Complainant infers that the only reason why it was registered is for the purpose of selling it for valuable consideration in excess to its documented out-of-pocket costs of registration. Additionally, the Complainant asserts that the Respondent never answered its communications and registered the disputed domain name with a privacy shield service hiding its identity. Such behavior is an additional indicator that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that the Respondent registered and uses the disputed domain name in bad faith. The worldwide reputation and well-known character of the mark MICHELIN, including in the Russian Federation where the Respondent is located, makes it unlikely that the Respondent was not aware of the Complainant’s rights. The Respondent knew or should have known this trademark. The reproduction of the Complainant’s trademark adding the generic term “tires”, which refers to the Complainant’s main field of activity and products, clearly indicates that the Respondent had this mark in mind while registering the disputed domain name.
Besides, the Complainant asserts that under Section 2 of the ICANN Policy there is a registrant’s duty to verify that the registration of any domain name would not infringe the rights of any third party before registering said domain name, and a quick trademark search would have revealed to the Respondent the existence of the Complainant’s trademark, or even a simple search via Google or any other search engine using the keywords “michelin” or “michlin” would demonstrate its existence, as all first results relate to the Complainant’s products or news. Taking into account the worldwide reputation of the Complainant and its trademark MICHELIN, as well as the high level of notoriety of the Complainant, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademark at the time of registration of the disputed domain name. Furthermore, the Respondent registered the disputed domain name through a privacy shield service hiding its identity and contact details, which may in itself indicate registration in bad faith.
Finally, the Complainant asserts that the Respondent uses the disputed domain name in bad faith, because although it is currently inactive, passive holding does not preclude a finding of bad faith when the circumstances in the Respondent’s behavior indicate the absence of bona fide use. The disputed domain name has been previously used to direct Internet users to a webpage displaying pay-per-click links, and it is likely that the Respondent registered the disputed domain name in an attempt to mislead Internet users and to prevent the Complainant from using its trademark in this domain name. Further, the disputed domain name is offered for auction on the Afternic website at the reserve price of USD 400, which is a higher sum than its out-of-pocket registration expenses. All these facts reveal the Respondent’s intention to resell the disputed domain name to the Complainant or to a competitor, which amounts to use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The first element of the Policy concerns only the identity or confusing similarity of the disputed domain name with a mark in which the complainant has rights, comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. In cases involving only slight differences in punctuation or spelling, UDRP panels regularly find sufficient confusing similarity to proceed to a consideration of the other Policy elements. See, e.g., Teva Pharmaceutical USA, Inc. v. Mode L, WIPO Case No. D2007-0369 and Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.
The Complainant indisputably has rights in the registered mark MICHELIN. The disputed domain name incorporates this mark deleting only one of its letters, as its first element, followed by the term “tires”, which is a dictionary term that appears as a secondary non-distinctive element and clearly relates to the main activity and products identified by the trademark MICHELIN.
The addition of the term “tires” to the word “michlin”, does not avoid the potential likelihood of confusion with the Complainants’ trademark.
Accordingly, this Panelist finds that the disputed domain name is confusingly similar to the Complainant’s mark. It substantially reproduces and incorporates substantially, as the most dominant element, the Complainant’s mark MICHELIN, followed by a generic term that refers to the Complainant’s main activity and products. Therefore, the Panel concludes that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
Here, the Complainant relies on the fact that it has not granted any authorization to the Respondent and there is no evidence that the Respondent has any other rights, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose. The disputed domain name has been temporally used to direct Internet users to a webpage displaying pay-per-click links and it is currently inactive. This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name.
Neither has the Respondent replied to the cease-and-desist letter and following reminders sent by the Complainant, nor has it replied to the Complainant’s contentions under the UDRP.
A respondent’s default does not automatically result in a decision in favor of the complainant. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, after consulting Complainant’s evidence of prior use of the disputed domain name and the repository Internet Archive (at “www.archive.org”) in order to obtain an indication of how the disputed domain names were used in the past, the Panel does not find any evidence that the Respondent has any rights or legitimate interests in the disputed domain names to rebut the Complainant’s prima facie case. The disputed domain name was inactive for a few years after its registration, it was temporally used to direct Internet users to a webpage displaying pay-per-click links, and afterwards it was left inactive again. These circumstances together with the offer to sell the disputed domain name through an auction website for a minimum price USD 400, leads the Panel to consider that the main interest of the Respondent has been to obtain an economic profit through its selling or by the diversion of Internet traffic from the Complainant’s website to the Respondent’s website. Therefore, the Panel concludes that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith”.
At the time of registration, due to the worldwide well-known character of the trademark MICHELIN, recognized in several UDRP decisions cited by the Complainant, as well as its extensive presence over the Internet, it is unlikely that the Respondent did not know about this trademark and registered the disputed domain name not having in mind this famous mark. It is especially difficult to find this considering that the disputed domain name substantially reproduces the mark MICHELIN adding the word “tires”, which refers exactly to the main activity and products identified by the Complainant’s well-known trademark.
Further, as the Complainant asserts, the Respondent used Contact Privacy Inc., a privacy service provider, to register the disputed domain name, which may constitute a factor indicating bad faith. See paragraph 3.9 of the WIPO Overview 2.0.
It is further to be noted that the apparent lack of current active use or passive holding does not as such prevent a finding of bad faith. All the circumstances of the case should be examined to determine whether the respondent is acting in bad faith, and, in particular, cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. See paragraph 3.2 of the WIPO Overview 2.0.
Furthermore, the Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or […]
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
As the Complainant argues, the disputed domain name is offered for sale in an auction platform for a minimum price USD 400, which exceeds the out-of-pocket costs directly related to its registration. This circumstance together with all other circumstances of this case lead the Panel to conclude that the main purpose of registration of the disputed domain name was its selling to the Complainant or to its competitors.
Further, the disputed domain name has temporally redirected to a webpage displaying pay-per-click links, which presumably generated a commercial gain to the Respondent based on thediversion of Internet traffic caused by confusion or association with the well-known trademark MICHELIN.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of Policy.
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 <michlintires.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: April 10, 2017