WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin (Michelin) v. Ruslan Meleshenkov

Case No. D2014-0703

1. The Parties

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

The Respondent is Ruslan Meleshenkov of Roslavl, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <tyresplus.net> is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2014. On April 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 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.

On May 9, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Russian. On May 12, 2014, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.

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 May 16, 2014. On the same date, the Center informed the parties that, given the provided submissions and circumstances of this case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Russian; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2014.

The Center appointed Ladislav Jakl as the sole panelist in this matter on June 23, 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

Michelin, the Complainant, owns the trademark MICHELIN, which is largely protected in the world, in connection with the automobile and tire manufacturing industries. The Complainant has marketing operations in more than 170 countries and employs more than 111,000 employees. The Complainant operates among other countries, in Armenia, Azerbaijan, Belarus, Georgia, Kazakhstan, Moldova, Russia, Tajikistan, Turkmenistan, Ukraine and Uzbekistan. The Complainant uses the trademark TYREPLUS in Russian Federation, China, Thailand and Australia. The Tyreplus network of car and truck tire centers TYREPLUS has common standards of business throughout Russia and the Commonwealth of Independent States (“CIS”) countries. Moreover, the Complainant owns and communicates on the Internet via various websites in order to present and to propose to the Internet users its services and products, and among them “www.tyreplus.com” and “www.tyreplus.com.ru”. True copies of the documents are attached as Annexes 8 and 10 to the Complaint.

The disputed domain name <tyresplus.net> was registered on August 30, 2013.

The Complainant is in particular the owner of the Russian combination trademark TYRE PLUS, registered under No. 305236 on April 20, 2006, duly renewed and covering goods and services in classes 12, 16, 35, 37, 41 and 42, as well as of the International trademark TYREPLUS, registered under No. 925317 on March 16, 2007 and covering goods and services classes 12, 16, 35, 37, 41 and 42 (Annex 12 to the Complaint).

Moreover the Complainant operates domain names reflecting its trademark, among others <tyresplus.com>, registered on April 15, 2003 and <tyresplus.com.ru>, registered on June 24, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant introduces, that before filing the Complaint, it had sent to the Respondent via registered letter and email a cease-and-desist letter dated on February 5, 2014, based on its trademark rights, requesting the Respondent to cease the use of the disputed domain name and to transfer it to the Complainant. But the Respondent never replied, despite several reminders.

The Complainant contends that the disputed domain name <tyresplus.net> is confusingly similar to the TYREPLUS trademark and that previous UDRP panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark (Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872). The disputed domain name fully incorporates the Complainant’s trademark TYREPLUS and it is identical and confusingly similar to this trademark in which the Complainant has rights. It argues with reference to a series of UDRP decisions (Swarovski Aktiengesellschaft v. mel xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059). According to the Complainant, the disputed domain name <tyresplus.net> reproduces its trademark TYREPLUS with the mere addition of the letter “s” to the term “tyre” and that the addition of a mere letter does not significantly affect the appearance or pronunciation of the disputed domain name. Such practice is commonly referred to as “typosquatting” and creates virtually identical and/or confusingly similar domain names to a complainant’s trademark (Mapfre S.A. y Fundación Mapfre v. Josep Sitjar, WIPO Case No. D2011-0692; Compagnie Gervais danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050). Furthermore, regarding the “net” in the disputed domain name, the addition of the generic Top-Level Domain (“gTLD”) suffix does not affect the likelihood of confusion, merely because it is necessary for the registration of the domain name itself (The Royal Bank of Scotland Group plc v. Najeeb Alim, WIPO Case No. D2012-1707; Nedbank Limited v. Online Promotions LTP, Anthony Brown, WIPO Case No. D2012-1465; Osram AG v. Alvin Ronaldo, WIPO Case No. D2013-0167). The Complainant concludes that the disputed domain name is confusingly similar to the Complainant’s trademark TYREPLUS in which it has rights, and therefore the condition of paragraph 4(a)(i) is fulfilled.

As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends 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 nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the TYREPLUS trademarks preceded the registration of the disputed domain name for years (Annexes 1 and 12 to the Complaint). The Complainant refers to previous UDRP decisions according to which the above mentioned “typosquatting” does not constitute a legitimate use of a trademark (FragranceX.com, Inc v. Argosweb Corp a/k/a Oleg Techino, WIPO Case No. D2010-1237). The Respondent is a reseller of, inter alia, Complainant’s products but it has never been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name confusingly similar with its trademark TYREPLUS. Moreover, the Complainant contends that the Respondent is neither commonly known by the name TYREPLUS, nor in any way affiliated with the Complainant, nor authorized or licensed to use the TYREPLUS trademark, or to seek registration of any domain name incorporating said trademark. In the absence of any license or permission from the Complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed (LEGO Juris A/S v. Domain Park Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host Master, WIPO Case No. D2010-0138). Additionally, the Complainant introduces that the Respondent never answered to Complainant’s cease and desist letter, despite the Complainant’s reminders, and that the previous UDRP decisions repeatedly stated that when the respondent does not avail itself of the right to respond to the complainant, it can be assumed that the respondent has no rights or legitimate interests in the domain name (AREVA v. St James Robyn Limoges, WIPO Case No. D2010-1017). The Complainant concludes that for all of the above-cited reasons, it is undoubtedly established that the Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.

Furthermore, the Complainant essentially argues that the disputed domain name was registered in bad faith, as it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. The Complainant is well-known throughout the world including in the Russian Federation and it is impossible that the Respondent had not this trademark and company name in mind while registering the disputed domain name. The Respondent’s reproduction of the Complainant’s trademark in its entirety in the disputed domain name clearly proves that the Respondent was aware of the existence of the Complainant’s trademark. The Complainant contends 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 (LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091; Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464). Previous UDRP panels have established that knowledge of the complainant’s intellectual property rights, including trademarks, at the time of registration of the domain name, proves bad faith registration (Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287; NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077).

The Complainant further argues that some elements may be put forward to support the finding that the Respondent also uses the disputed domain name in bad faith. There is a little doubt that many Internet´s users attempting to visit the Complainant’s website have ended up on the webpage set up by the Respondent.

It has intentionally attempted to attract Internet users to its website for financial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the goods sold on or through the Respondent’s website (The John Hopkins Health System Corporation, The John Hopkins University v. Domain Administrator, WIPO Case No. D2008-1958; EPSON Europe BV v. M31 Internet Palma, S.L., WIPO Case No. D2005-0604). The Respondent has an intention to use the disputed domain name to make a profit, or as blocking registration or to take advantage of the Complainant’s goodwill and disrupt the Complainant’s business and take unfair advantage and cause detriment to it and thus this finding alone may be sufficient to decide that the disputed domain name is an abusive registration and use.

Consequently, the Complainant concludes that it is established that the Respondent both registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

B. Respondent

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

6. Discussion and Findings

On the question of the language of the proceedings, the Registrar has confirmed that the language of the registration agreement is Russian. The Panel further notes that the Registrar’s website displays the registration agreements both in English and Russian. On May 12, 2014, the Complainant requested English to be the language of the proceedings. Paragraph 11(a) of the Rules provides, that in absence of an agreement between 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 Administrative Panel (once appointed) to determine otherwise. The Panel, taking in to account all circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein, decides that the language of the administrative proceedings be English (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836; F. Hoffmann-La Roche AG v. Onotole Vasermane, WIPO Case No. D2010-2074; F. Hoffmann-La Roche AG v. Nikolay Fedotov, WIPO Case No. D2011-1636; Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(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 disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

There is no doubt that the disputed domain name <tyresplus.net>, is confusingly similar, as it fully incorporates the Complainant’s trademark TYREPLUS. The disputed domain name reproduces the Complainant’s trademark TYREPLUS with the mere addition of the letter “s” to the term “tyre”. Addition of a mere letter does not significantly affect the appearance or pronunciation of the disputed domain name. The Panel accepts the Complainant’s arguments that such a practice is commonly referred to “typosquatting” and creates a virtually identical and/or confusingly similar disputed domain name to the Complainant’s trademark (Mapfre S.A. y Fundación Mapfre v. Josep Sitjar, WIPO Case No. D2011-0692; Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050). Simple inclusion of the gTLD suffix “.net” does not avoid confusing similarity of the domain name and the trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310; Swarovski Aktiengesellschaft v. Luo Li, WIPO Case No. D2012-1604; Swarovski Aktiengesellschaft v. Tiphayne Decultot, WIPO Case No. D2013-1858; Nedbank Limited v. Online Promotions LTP, Anthony Brown, WIPO Case No. D2012-1465; Osram AG v. Alvin Ronaldo, WIPO Case No. D2013-0167).

For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademarks and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

(i) before the Respondent obtained any notice of the dispute, has not used or has not made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has not been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent was not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel accepts the arguments of the Complainant, unchallenged by the Respondent, that the Respondent is neither commonly known by the name TYREPLUS, nor in any way affiliated with the Complainant, nor authorized or licensed to use the TYREPLUS trademark, or to seek registration of any domain name incorporating said trademark. In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (LEGO Juris A/S v. Domain Park Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). The Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the TYREPLUS trademarks preceded the registration of the disputed domain name for years (Annexes 1 and 12 to the Complaint). The Respondent is neither commonly known by the name TYREPLUS, nor authorized or licensed to use the TYREPLUS trademark, or to seek registration of any domain name incorporating the Complainant’s trademark. Moreover, the Panel accepts the Complainant’s arguments that the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy, as it is using the disputed domain name for an online store offering for sale the Complainant’s products and products of the Complainant’s competitors such as Dunlop, BFGoodrich and Bridgestone. The Respondent has never been known by the disputed domain name and has no legitimate interest in the Complainant’s trademarks or the name (Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610). The Respondent’s use of the TYREPLUS trademark is clearly for the purpose of misleading consumers into believing that the Respondent is associated with or approved by the Complainant. The Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation. Moreover, the Respondent never answered to the Complainant’s cease and desist letter, despite the Complainant’s reminders. Such behavior is further evidence that the Respondent has no rights or legitimate interests in the disputed domain name (AREVA v. St James Robyn Limoges, WIPO Case No. D2010-1017). For the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

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

The Complainant has submitted the evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the Complainant’s trademark and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name. Previous UDRP panels have established that knowledge of the Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name, proves bad faith registration (Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287; NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077). The Panel has no doubt that the Respondent’s reproduction of the Complainant’s trademark in its entirety in the disputed domain name further proves that the Respondent was aware of the existence of the Complainant’s trademark. The Respondent’s registration and use of the disputed domain name attracts Internet users to the website because of its purported affiliation with the Complainant. This is evidence of the Respondent’s bad faith registration and use of the disputed domain name (Swarovski Aktiengesellschaft v. Hopper Dirt, WIPO Case No. D2011-1525). The Panel finds that the disputed domain name is also being used in bad faith, as it intentionally attempts, for commercial purpose, to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products or services posted on the Respondent’s website (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049).

For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <tyresplus.net> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: July 2, 2014