WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Contact Privacy Inc. Customer 124896988 / Mingyan Li, Michelin motorsport APAC

Case No. D2018-1557

1. The Parties

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

Respondent is Contact Privacy Inc. Customer 124896988 of Toronto, Canada / Mingyan Li, Michelin motorsport APAC, represented by Roland Li of New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <michelin-motorsport.com> (“Domain Name”) is registered with Google Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2018. On July 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 11, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 17, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On July 18, 2018, the Center received an email communication from Respondent indicating that it did no longer need the Domain Name. In response to this, the Center sent a possible settlement email to the Parties on July 18, 2018. On July 20, 2018, Complainant requested to suspend the proceeding for 30 days in order to explore the possibility for settlement. The proceeding was subsequently suspended on July 20, 2018, for 30 days. Complainant submitted to the Center a request for extension of suspension on August 20, 2018, which was granted by the Center on the same day, with the new deadline for the end of suspension set to September 20, 2018. On September 19, 2018, Complainant submitted a request to the Center to reinstitute the proceeding, and submitted at the same time an amended Complaint. The Center notified the Parties on September 20, 2018, that the proceeding had been reinstituted.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2018. Respondent did not submit any formal response. On October 12, 2018, the Center notified the Parties that it will proceed to appoint the panel.

The Center appointed Marina Perraki as the sole panelist in this matter on October 30, 2018. 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

According to the Complaint, Complainant is a leading tyre company, headquartered in France, commercially present in 170 countries and operating 68 production facilities in 17 countries. As per Complaint, Complainant produced 187 million tyres in 2016. Complainant is also involved in selling and distributing tyres for motorsport. As per Complaint, since the beginning of World Championships in the 1970s, Complainant has won over 2,000 races in major events. Complainant’s motorsport business division has formed technological partnerships with brands such as Porsche (for over 50 years), Audi, Peugeot, Toyota, Volkswagen, Hyundai, Ferrari and Corvette. Complainant also operates the website “www.michelinmotorsport.com”.

Complainant holds numerous trademark registrations for the MICHELIN mark, including the international registration no 348615, registered on July 24, 1968 for goods in international classes 1, 6, 7, 8, 9, 12, 16, 17 and 20 and the European Union trademark registration no 001791243, filed on August 3, 2000 and registered on October 24, 2001, for goods in international classes 6, 7, 12, 17 and 28.

Complainant is also the owner of a number of domain name registrations, including the domain name <michelin.com>, registered on December 1, 1993 and the domain name <michelinmotorsport.com>, registered on May 16, 2012.

The Domain Name was registered on November 4, 2016 and redirects to Complainant’s official website “www.michelinmotorsport.com”.

On January 04, 2018, January 11, 2018 and January 22, 2018, Complainant sent cease and desist letters to Respondent, to which Respondent did not reply.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the MICHELIN mark.

The Panel finds that the Domain Name <michelin-motorsport.com> is confusingly similar with the MICHELIN trademark of Complainant.

The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

Furthermore, the word “motorsport” which is added in the Domain Name does not avoid a finding of confusing similarity as it is a descriptive, non-distinctive term (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The addition of a hyphen “-” between the words in the “michelin-motorsport” portion of the Domain Name is immaterial for the purpose of comparison (Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300).

The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

Respondent did not demonstrate any prior to the notice of the dispute use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrates, the Domain Name redirects users to Complainant’s official website “www.michelinmotorsport.com”. A respondent’s use of a complainant’s mark to redirect users would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3). This, along with the fact that the Domain Name was registered with a privacy shield service, speaks against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the MICHELIN mark is so well-known and had been widely used and registered at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Société des Produits Nestlé SA v. Telmex Management Service, WIPO Case No. D2002-0070).

Furthermore, the Domain Name incorporates in whole Complainant’s mark plus an additional term “motorsport” that corresponds to the motorsport business of Complainant and it is practically identical to an existing domain name of Complainant, namely <michelinmotorsport.com>. Use of the word “motorsport” in the Domain Name therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name.

The redirection of the Domain Name to Complainant’s official website “www.michelinmotorsport.com” also supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367; Myspace, Inc. v. Mari Gomez, WIPO Case No. D2007-1231).

As regards bad faith use, Complainant has demonstrated that the Domain Name is used for redirecting users to Complainant’s official website. This can establish bad faith as Respondent retains control over the redirection thus creating an implied ongoing threat to Complainant (WIPO Overview 3.0, section 3.1.4, Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Myspace, Inc. v. Mari Gomez, supra; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel considers the following factors to further suggest bad faith: (i) the reputation of Complainant’s mark, (ii) the failure of Respondent to submit a response, (iii) the concealment of the Domain Name holder’s identity through use of a privacy shield at the time of filing of the Complaint (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364; Fédération Internationale de Football Association (“FIFA”) v. Whois Privacy Shield Services / Winsum Wong, WIPO Case No. D2016-2310; The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924) and (iv) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated the Domain Name redirects to Complainant’ s official website.

Furthermore, as Complainant demonstrated, following disclosure of the Domain Name registrant and contact information, it appeared that the Domain Name was registered by Respondent under the name “Michelin motorsport APAC”, while Complainant is not the registrant of the Domain Name.

Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.

Complainant has established Policy paragraph 4(a)(iii).

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, <michelin-motorsport.com> be transferred to the Complainant.

Marina Perraki
Sole Panelist
Date: November 13, 2018