WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Serdar Ars / Serdar Arslan
Case No. D2015-0658
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Serdar Ars / Serdar Arslan of Istanbul, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <michelincrossclimate.com> is registered with IHS Telekom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2015. On April 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2015, 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 April 14, 2015, the Center received an email communication from a third party. On April 20, 2015, the Complainant confirmed its request that English to be the language of proceeding. On April 23, 2015, the Respondent requested Turkish to be the language of proceeding.
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 both in Turkish and in English, and the proceedings commenced on April 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2015. The Response was filed with the Center on May 15, 2015. On May 18, 2015, the Center contacted the Parties regarding a possible settlement. On May 18, 2015, the Complainant requested the continuation of the proceeding.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on June 1, 2015. 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 French company which operates in the automobile and tire industries, as well as publishing hotel and restaurant guides under the MICHELIN trademark. The Complainant has operations in 170 countries throughout the world. The Complainant is the owner of many trademarks throughout the world incorporating MICHELIN, including the International Trademark No. 348615 registered on July 24, 1968. Protection is claimed for a variety of products and services, inter alia, for the manufacturing and selling of tires.
Additionally, Michelin has develop the Michelin CrossClimate tire and registered CROSSCLIMATE as international trademark also protected in Turkey.
Michelin is present in Turkey through Michelin Lastikleri Ticaret A.Ş. since the year 1996.
Furthermore, the Complainant holds and operates various domain names incorporating the MICHELIN trademark, including <michelin.com> and, in Turkey, <michelin.com.tr>.
The disputed domain name has been registered on March 2, 2015 by the Respondent.
5. Parties’ Contentions
The Complainant owns the MICHELIN trademark, which is largely protected around the world in connection with the automotive industry, hotel and restaurant guides and maps, especially in Australia, the European Union and within the International Trademark System (Madrid System for the International Registration of Marks).
MICHELIN is a “well-known” and “famous” trademark. Consequently, the Respondent knew about the Complainant’s trademark before the disputed domain name was registered.
The disputed domain name <michelincrossclimate.com> resolves to a web site in Turkish which relates to Complainant’s products and looks like an official web site with a copyright Michelin CrossClimate.
The disputed domain name comprises the Complainant’s trademarks MICHELIN and CROSSCLIMATE. The Respondent has no prior rights or legitimate interests in the disputed domain name.
The Respondent is not affiliated with the Complainant in any way nor has the Respondent been authorized to use the trademark MICHELIN.
The Respondent has never been commonly known by the disputed domain name or the trademark MICHELIN.
The Respondent uses the disputed domain name to divert web traffic for commercial gain using the good will built up by Complainant.
A third party Mr. Onur Eren from KolayOto has sent a response in the name of the Respondent. The Panel finds that the disputed domain name is not registered by the company KolayOto or Mr. Onur Eren and they are not one of the parties of this dispute. However, with his communication of May 15, 2015, the Respondent confirmed the said response.
According to the said response, the Respondent’s defense is primarily based on the relationship between Michelin Turkey and the company KolayOto. The Respondent claims that he is respectful of intellectual property rights, has no interest in gaining economic profit from the owning of the disputed domain name, have already informed the Complainant that the disputed domain name will be removed and is willing to comply with the decision of the Center.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide the 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.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and;
(iii) that the disputed domain name has been registered and are being used in bad faith.
A. Language of the Proceeding
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11(a) of page 4 the Rules is to ensure fairness in the selection of the language by giving full consideration to the parties’ level of comfort with the language, the expenses to be incurred and possibility of delay of the proceeding in the event translation is required.
The Panel notes the Respondent’s statement that he has no interest in gaining economic profit from the disputed domain name, the disputed domain name will be removed by June 23, 2015 and he will comply with the Panel’s decision. The Panel also notes that the Response submitted by the Respondent contains annexes in English.
Considering the facts of the dispute, although the language of the Registration Agreement is Turkish, the Panel determines in accordance with the Rules, paragraph 11(a) that the language of these administrative proceedings shall be the English language.
B. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s trademarks MICHELIN and CROSSCLIMATE in its entirety.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g.,Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
Therefore, the Panel finds that the disputed domain name <michelincrossclimate.com> is confusingly similar to the trademarks MICHELIN and CROSSCLIMATE, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Respondent has failed to demonstrate such rights or legitimate interests. The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods or services by its use of the disputed domain name and has not rebutted the Complainant’s prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain name.
The Panel further finds that given the use made of the disputed domain name (as discussed below), when the Respondent registered the disputed domain name it must have known the MICHELIN and CROSSCLIMATE trademarks of the Complainant. It registered the disputed domain name because it would be recognized as such, therefore creating confusion as to the sponsorship or endorsement of the website.
The Panel notes the Respondent’s statement that he has no interest in gaining economic profit from the disputed domain name. Irrespective of the Respondent’s statement, the Panel notes that the Respondent has also stated that he is willing to remove the disputed domain name by June 23, 2015. In the Panel’s view, this would indicate that the Respondent does not have an interest in the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
According to the evidence submitted by the Complainant, the disputed domain name resolved to a website which related to the Complainant’s products and had the look and feel of the Complainant’s official website. Currently, the disputed domain name resolves to a website selling the Complainant’s products in which the name of KolayOto is included. The Panel also notes that the current website does not include a clear and prominent disclosure as to the relationship between the Respondent and the Complainant.
The Panel is of the opinion that the Respondent must have been aware of the Complainant and its trademark rights when it registered the disputed domain name. Bearing this in mind, the Panel finds the Respondent’s bad faith is illustrated by the fact that the disputed domain name resolved to a web site in Turkish which relates to Complainant’s products and looks like an official web site. The Panel is prepared to infer that the Respondent intended to disrupt the Complainant’s business and/or to take advantage of the goodwill and reputation of the Complainant’s trademark for commercial gain. Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Universal Spheres Inc., WIPO Case No. D2010-0822.
As in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma International LDC, WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element of the 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, <michelincrossclimate.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Date: June 17, 2015