WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Isaac Goldstein, Hulmiho Ukolen, Poste restante/Domain Admin, Whois protection, this company does not own this domain name s.r.o.
Case No. D2015-1787
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondents are Isaac Goldstein of Hong Kong, China; Hulmiho Ukolen, Poste restante of Helsinki, Finland / Domain Admin, Whois protection, this company does not own this domain name s.r.o. of Prague, Czech Republic.1
2. The Domain Name and Registrar
The disputed domain name <michelinlearninginstitute.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2015. On October 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on October 9, 2015 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 12, 2015 in which the Complainant asserted that the Respondent Isaac Goldstein still managed the disputed domain name.
On October 9, 2015, the Center sent an email communication to the parties in Finnish and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.
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 the Respondents of the Complaint, and the proceeding commenced on October 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on November 6, 2015.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on November 11, 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 the owner of the trademark MICHELIN, registered in several countries, including as a Community Trademark No. 004836359 registered on March 13, 2008. The Complainant also operates various websites, such as "www.michelinlearninginstitute.net".
The disputed domain name was registered on June 6, 2015.
5. Parties' Contentions
The Complainant is a leading tire company in the world. It is present in more than 170 countries, has 112,300 employees and operates 68 production plants in 17 different countries.
The disputed domain name is identical or at least confusingly similar to the Complainant's trademark MICHELIN. The disputed domain name substantially reproduces the Complainant's trademark in its entirety which previous UDRP panels have considered to be "well known" or "famous". This is insufficient to avoid any likelihood of confusion, especially in light of the Complainant's Michelin Learning Institute.
The Respondents are not affiliated with the Complainant in any way nor have they been authorized by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said mark. Furthermore, the Respondents have no prior rights or legitimate interests in the disputed domain name.
It is implausible that the Respondents were unaware of the Complainant when they registered the disputed domain name. The Complainant is well known throughout the world including Hong Kong, China, Czech Republic and Finland – the home countries of the Respondents. The Respondents use the disputed domain name to direct Internet users to a webpage displaying pay-per-clicks links which are likely to generate revenues. The Respondents are taking undue advantage of the Complainant's trademark to generate profits.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise.
The language of the registration agreement is Finnish, as confirmed by the Registrar.
The Complainant has requested that the language of the proceeding be English. The website to which the disputed domain name resolves is in English. Hence the Respondents have sufficient knowledge of English. The Complainant has no knowledge of Finnish and it would need to retain translation services if the language of the proceeding was not English.
The Respondents have not rebutted this request or the Complainant's reasoning and have not made any language request.
The Panel finds that the Respondents apparently can understand English and the Complainant would be unfairly disadvantaged by being forced to translate the Complaint into Finnish. Hence the Panel determines that the language of the proceeding shall be English.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
As held by several prior UDRP panels, the Complainant's trademark MICHELIN is undoubtedly a well-known trademark for tires all over the world. The disputed domain name incorporates the Complainant's trademark in its entirety and combines it with two common English words, namely "learning" and "institute". In the Panel's opinion, combining an exact reproduction of a trademark with common, descriptive words does not avoid a finding of confusing similarity to the Complainant's trademark. This is more so in light of the Complainant's Michelin Learning Institute operating at "www.michelinlearninginstitute.net".
In accordance with paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks, and hence the first element of the Policy has been fulfilled.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests to the disputed domain name.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent's rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and paragraph 2.1 WIPO Overview 2.0.
The Complainant has submitted that it is not affiliated with the Respondents, it has not authorized the Respondents to use the trademark MICHELIN or the disputed domain name, and that the Respondents are not commonly known by the disputed domain name. The Respondents have not rebutted these arguments.
The Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondents. Therefore, the Panel finds that the second element of the Policy is fulfilled.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant to establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that 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 [the respondent has] registered or has 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 [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [the 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location."
Considering the reputation of the Complainant's trademark MICHELIN, and also considering that the Complainant owns and operates a website at "www.michelinlearninginstitute.net", the Respondents must have been aware of it when registering the disputed domain name. It is therefore clear that the Respondents have targeted the Complainant's trademark and its reputation when registering the disputed domain name.
The Respondents use the disputed domain name to direct Internet users to a website displaying pay-per-clicks links which are likely to generate revenues. These links lead Internet users to the websites where goods competing with those of the Complainant are offered.
The use of the Complainant's trademark to attract Internet users to a website for commercial gain constitutes a use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Further, the fact that the website leads Internet users to websites offering competing goods disrupts the Complainant's business and also constitutes use in bad faith pursuant to paragraph 4(b)(iii) of the Policy.
Based on the above, the Panel finds that the disputed domain name was registered and is being used in bad faith, and therefore also the third element of the Policy is fulfilled.
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 <michelinlearninginstitute.com> be transferred to the Complainant.
Date: November 25, 2015
1 Hulmiho Ukolen, Poste restante is the registrant of the disputed domain name as confirmed by the Registrar. The Complainant submits that Isaac Goldstein is the real person behind the disputed domain name as it was registered by Mr. Goldstein prior to the Complainant's cease and desist letter and prior to the current privacy service. Mr. Goldstein has also replied to the Complainant's letter. Consistent with the Panel's finding in RE/MAX, LLC v. Privacy--protect.org / Issac Goldstein / Hulmiho Ukolen, Shlomo Icik, WIPO Case No. D2013-2036, the Panel finds that all Respondents are either the same entity or related in some way.