WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Natal’ja Bezuglaja / Internet Invest, Ltd. dba Imena.ua, Whois privacy protection service
Case No. D2014-0416
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Natal’ja, Bezuglaja of Dnepropetrovsk, Ukraine / Internet Invest, Ltd. dba Imena.ua, Whois privacy protection service of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <michelin-ua.com> is registered with Internet Invest, Ltd. dba Imena.ua (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 19, 2014, the Registrar transmitted by email to the Center its verification 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 March 19, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date the Center also transmitted a language of the proceedings document to the parties in both English and Russian. The Complainant filed an amended Complaint along with three new annexes to support its request for English to be the language of the administrative proceedings on March 21, 2014.
The Center verified that 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 in both the English and Russian languages, and the proceedings commenced on March 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2014 in both the English and Russian languages.
The Center appointed Assen Alexiev as the sole panelist in this matter on May 15, 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.
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant has submitted its Complaint in the English language, and has requested the proceeding to be held in English with the argument that if the language of the proceeding is Russian, that would put the Complainant in a disadvantage and would require it make significant expenses for translation services. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express his views on the language of the proceeding, while at the same informing the Respondent that if it does not object to the request of the Complainant for the use of English in the proceeding would be regarded as a tacit consent to the same. The Respondent has submitted no response to the invitation to comment on the language issue and has not objected the proceedings to be held in English.
In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account the relevant evidence that is available in this case in either Russian or English language.
4. Factual Background
The Complainant is one of the largest tire manufacturing companies worldwide. It has marketing operations in more than 170 countries and employs more than 110,000 employees. The Michelin Group opened a commercial agency in Ukraine in 2010 and Michelin now sells its products in various parts of the country.
The Complainant owns the following trademark registrations for MICHELIN (the “MICHELIN trademark”):
- the word trademark MICHELIN, an International registration with registration No.348615, registered on July 24, 1968, covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20; and
- the word trademark MICHELIN, a Community trademark with registration No.004836359, registered on March 13, 2008, covering goods and services in classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34 and 39.
The Complainant operates the domain names <michelin.com>, <michelin.ru> and <michelin.ua>.
The disputed domain name was registered on March 1, 2013.
5. Parties’ Contentions
According to the Complainant, the disputed domain name is identical or confusingly similar to the MICHELIN trademark. The disputed domain name entirely reproduces this trademark in combination with the letters “ua” intersected by a hyphen. The letters “ua” correspond to the ISO code of Ukraine, as a result of which the disputed domain name suggests that it is connected with the Complainant’s activity in this country.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use and register its trademark or to seek registration of any domain name incorporating the same trademark. The registration of the MICHELIN trademark preceded the registration of the disputed domain name for years. The Complainant has not authorized the Respondent to develop a website with the logotype MICHELIN and to claim an affiliation with the Complainant. The disputed domain name resolves to a counterfeiting website in the Russian language which offers automotive products labeled with the MICHELIN trademark, and claims to be offering the “best prices from the official dealer”. The website also reproduces the MICHELIN logo of the Complainant along with the symbol of the Complainant commonly known as the Michelin Man. The website at the disputed domain name thus creates a false affiliation with the Complainant, which may lead Internet users to wrongly believe this is an official website of Complainant’s activities in Ukraine. According to the Complainant, this use of the disputed domain name does not represent a bona fide offering of goods and services.
According to the Complainant, the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of Complainant when it registered the disputed domain name. The Complainant is well-known throughout the world, and the Respondent’s use of the well-known MICHELIN trademark suggests opportunistic bad faith. The imitation of Complainant’s website shows that the Respondent aims at taking unfair advantage of the Complainant’s reputation and intends to obtain commercial gains from the proposed online e-commerce system through the creation of initial interest of confusion.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed 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 disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided information about the registrations of the MICHELIN trademarks and has thus established its rights in these trademarks.
It is a common practice under the Policy to disregard in appropriate circumstances the generic Top-Level Domains (“gTLD”) such as the “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name here is its “michelin-ua” section. This section appears as a combination of two separate elements - “michelin” and “-ua”. The first element is identical to the Complainant’s well known MICHELIN trademarks, while the second element coincides with the ISO code and the ccTLD for Ukraine – the country where the Respondent is located and the market to which the website at the disputed domain name is directed. In the Panel’s view, this combination of elements does not distinguish the disputed domain name from the MICHELIN trademarks. Rather, it makes it likely that Internet users would associate the disputed domain name with the Complainant and its MICHELIN products and would have the impression that the disputed domain name represents an official online location of the Complainant dedicated to the Ukrainian market. This impression would be further strengthened by the content of the website at the disputed domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the MICHELIN trademarks in which the Complainant has rights, and that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the name “MICHELIN” and is not affiliated to the Complainant, that it was not authorized or licensed to use the MICHELIN trademark or to register a domain name incorporating the same trademark. The Complainant also asserts that it has not authorized the Respondent to develop a commercial website at the disputed domain name and to claim having an affiliation to the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent, although given a fair opportunity to do so, chose not to present to the Panel any response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reason for the registration and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor.
Apart from the factual contentions of the Complainant, the only other sources of information about the Respondent is the WhoIs information, provided by the Registrar, and the content of the website at the disputed domain name. The WhoIs information contains no evidence that the Respondent is commonly known by the disputed domain name. The disputed domain name is confusingly similar to the MICHELIN trademarks of the Complainant, which were registered long before the registration of the disputed domain name. As contended by the Complainant and undisputed by the Respondent, the Respondent’s website at the disputed domain name features the Complainant’s distinctive MICHELIN trademark and logo and offers counterfeit goods labeled with the MICHELIN trademark, and the website incorrectly claims that the Respondent is an official dealer of the Complainant. This design of the website may well lead Internet users to wrongly believe that it is an official website of the Complainant’s for the Ukrainian market where genuine MICHELIN products are offered.
In the Panel’s view, these circumstances show that the Respondent must have been well aware of the Complainant and of its MICHELIN trademarks when he registered the disputed domain name, and its registration and use was made without the consent of the Complainant in an attempt to benefit from the reputation of the MICHELIN trademarks and products. The Panel is of the opinion that the Respondent’s conduct cannot give rise to rights and legitimate interests in the disputed domain name, and finds that the Complainant’s prima facie case has not been rebutted. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 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 website or location or of a product or service on your website or location.”
As discussed above in relation the issue of rights and legitimate interests, the Respondent must have been aware of the Complainant’s MICHEL IN trademarks at the time of the registration of the disputed domain name, which is confusingly similar to the same trademarks. The Respondent has not established that it has any rights or legitimate interests in the disputed domain name, and has not denied that the commercial website linked to the disputed domain name offers counterfeit products bearing the MICHELIN trademarks. Taken together, and in the absence of any evidence or allegation to the contrary, these circumstances satisfy the Panel that the Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s MICHELIN trademarks as to the source, sponsorship, affiliation, or endorsement of the same website and of the goods offered on it. This supports a finding of bad faith registration and use of the disputed domain name under Policy, paragraph 4(b)(iv).
Therefore, the Panel finds that the Respondent has registered and used the disputed domain name 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 <michelin-ua.com> be transferred to the Complainant.
Date: June 9, 2014