WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michelin Recherche et Technique S.A. v. Jaz Azula, Genesis Media
Case No. D2014-0415
1. The Parties
The Complainant is Michelin Recherche et Technique S.A. of Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Jaz Azula, Genesis Media of Tel Aviv, Israel.
2. The Domain Name and Registrar
The disputed domain name <bggoodrich.com> is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on March 17, 2014. On March 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on March 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for response was April 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2014.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on April 24, 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 following background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of challenge, can be accepted as background.
The Complainant is one of the companies in the Michelin Group of companies and as such claims that it owns numerous BFGOODRICH trademark registrations around the world and in particular Israel, the Israeli trademark having been registered with effect from December 29, 1999, assigned to the Complainant on September 18, 2002, and renewed from time to time and covering goods in Class 12. In addition, the Complainant is the owner of several domain names that incorporate the trademark BFGOODRICH in particular the Complainant is the owner of the following domain names:
(a) <bfgoodrich.com> registered on August 15, 1996;
(b) <bfgoodrichtires.com> registered on June 19, 1997; and
Although the Complainant has not furnished schedules of other trademark registrations, it avers that the trademark BFGOODRICH is well-known and enjoys a worldwide reputation. The Complainant operates in the field of automobile and tire manufacturing industries as well as in connection with hotel and restaurant guides and map publications. It further avers that it has a definite and undisputable reputation in the automotive industry.
Some years ago the Complainant acquired from the BFGoodrich Corporation, an American tire manufacturer, the trademark BFGOODRICH which is currently a part of its group of trademarks. It has over the years used this brand name in rallying and is considered a world benchmark in certain forms of rallying.
5. Parties' Contentions
The Complainant asserts that the Respondent registered the disputed domain name on October 9, 2013, although it is registered in a slightly altered form, namely, <bggoodrich.com>. The Complainant contends, however, that this slight alteration in no way detracts from the similarity of the disputed domain name when compared to the Complainant's registered mark and domain names that there is sufficient similarity to give rise to confusion thereby constituting an intrusion into the Complainant’s rights.
The Complainant further complains that there is no affiliation of the Respondent with it in any way, nor has any authority been granted to it to use and register the trademark or domain name or to seek registration of any domain name similar to its mark or domain names. Thus it is contended that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Complainant asserts that the Respondent could not have been unaware of the Complainant when the disputed domain name was registered as it is a well-known trademark throughout the world including, in particular, in Israel. The Complainant avers that this is strengthened by the fact that the Respondent has chosen to use the mark with a minor alteration of one letter.
Despite there having been a cease and desist letter and reminders sent by the Complainant there has been no reply or reaction on the part of the Respondent nor is there anything to show that the registration and use could not have been in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights.
(ii) That the respondent has no rights or legitimate interests in respect of the domain name.
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent's rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, the complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the complaint being denied (M Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, aka Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, a panel shall draw such inference as it considers appropriate from the failure of a party, in the absence of exceptional circumstances, to comply with any provision or requirement under the Rules (Allianz Compañia de Seguros y Reaseguros S A v. John Michael, WIPO Case No. D2009-0942).
The Complainant sent a “cease and desist” letter to the Respondent. Despite reminders no response was elicited. If this was due to the Respondent's failure to furnish a correct address, as is pointed out, this would be a breach of the registration agreement. However, the Center has furnished proof that the Respondent received Notification of Complaint and Commencement of Administrative Proceeding, as well as the Complaint and its annexures on March 19, 2014, by email. Attempts by the Center to deliver the Written Notice were, however, unsuccessful. The Panel is nevertheless satisfied that the Respondent was aware of the proceedings on receipt of the email notification albeit the attempted deliveries at its physical address were unsuccessful.
In the circumstances, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Ltd v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons Inc v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation, supra; VR Holding A/S v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters, supra; RX America LLC v. Matthew Smith, WIPO Case No. D2005-0540; Allianz, supra; Standard Innovation Corporation, supra; VKR Holdings A/S, supra; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).
C. Identical or Confusingly Similar
The Complainant is the owner, among others, of the Israeli trademark BFGOODRICH No. 133639, dated of December 29, 1999, duly renewed and covering goods in class 12. The Complainant also gives details as to its domain names and their dates of registration.
The Complainant has cited several previous UDRP decisions of WIPO which it contends confirm that the BFGOODRICH trademark is world famous. As the Respondent was not party to any of these decisions, the Panel considers that a doctrine such as res judicata or issue estoppel does not apply, and what may have been found proven in those decisions is not evidence in this matter or binding on the Panel. (LEGO Juris A/S v. Administracion Dominios, WIPO Case No. D2013-0265; LEGO Juris A/S v. Michael Fainshtein, WIPO Case No. D2013-0464).
However, on the basis of its averments and contentions in this matter as to a worldwide reputation, the Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has sufficiently established that it has registered trademark rights which may fall within the provisions of Article 6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 6.2 and 6.3 of the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the “TRIPS Agreement”). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412).
The Complainant contends that the substitution of a single letter is not sufficient to exclude the confusing similarity (Fry's Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; V R L International Ltd v. Domaincar, WIPO Case No. D2006-0240; and Compagnie Gervais Danone of Paris v. Jose Gregorio Hernandes Quintero, WIPO Case No. D2009-1050).
In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the omain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4 (a) of the Policy. (Document Technologies Inc v. International Electronic Communications Inc., WIPO Case No. D2000-0270; University City Studios Inc, (supra)).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the proprietor of the trademark BFGOODRICH, particularly in Israel, where the Respondent is based, as well as the associated domain names in question and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the disputed domain name and that any unauthorized use for commercial purposes would most likely violate the exclusive trademark rights enjoyed by the Complainant. (Guerlain S A v. Peikang, WIPO Case No. D2000-0055; Caesar's World Inc & Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer, supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc, supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, 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:
“(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
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
While bad faith can exist where a domain name contains in its entirety a Complainant's trademark (Cellular One Group v. Paul Brien, WIPO Case No. D2000-0029), the Panel does not see that this principle cannot also apply in circumstances where the domain name almost in its entirety, save for a one letter change, is an intentional adoption of the Complainant's registered trademark and domain names.
The implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with the Complainant via someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer case, supra).
Moreover, by use of a domain name confusingly similar to the Complainant’s trademark, the Respondent is trading on the value established by the Complainant in its marks to attract Internet users and thereby deriving economic benefit from either those users attracted to the Respondent’s website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (Yahoo! Inc & Geo Cities v. Data Art Corp, Data Art Enterprises Inc, Stonybrook Investments, Globalnet 2000 Inc, Powerclick Inc, and Yahoo Search Inc, WIPO Case No. D2000-0587).
The selection of a domain name that is the same as, or confusingly similar to the Complainant’s trademark and the Complainant’s domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the disputed domain name in circumstances where it must have been well aware of the Complainant’s reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC, supra).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <bggoodrich.com> be transferred to the Complainant.
Archibald Findlay SC
Date: May 2, 2014