WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin, Manufacture Française des Pneumatiques Michelin v. Guy Buchet
Case No. D2016-0806
1. The Parties
The Complainants are Compagnie Générale des Etablissements Michelin and Manufacture Française des Pneumatiques Michelin of Clermont-Ferrand, France (collectively referred to as (the “Complainant”), represented by Dreyfus & associés, France.
The Respondent is Guy Buchet of Brussels, Belgium.
2. The Domain Name and Registrar
The disputed domain name <michelin-france.com> is registered with Register.IT SPA (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2016. On April 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2016, 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 sent an email communication to the Parties on April 27, 2016, informing them that French was the language of the Registration Agreement for the disputed domain name, and requesting that the Complainant provide either satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the administrative proceeding should be in English; or, to submit the Complaint translated into French; or, submit a request for English to be the language of the administrative proceeding. The Respondent was also invited to make submissions regarding the language of the administrative proceeding. The Complainant filed a request for English to be the language of the administrative proceeding on April 29, 2016. The Respondent did not make any submissions in this regard.
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 and 4, the Center formally notified the Respondent of the Complaint in English and in French, and the proceedings commenced on May 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2016.
The Center appointed Christophe Imhoos as the sole panelist in this matter on May 27, 2016. 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 introduces itself as a leading tire company dedicated to sustainably improving the mobility of goods and people by manufacturing and marketing tires for every type of vehicle including airplanes, automobiles, bicycles, motorcycles, earthmovers, farm equipment and trucks. It also offers electronic mobility support services on its website “www.viamichelin.com” and publishes travel guides, hotel and restaurant guides, maps and road atlases.
The Complainant explains that, headquartered in Clermont-Ferrand, France, it is present in more than 170 countries, has 112,300 employees and operates 68 production plants in 17 different countries; it further states that its group has a technology center in charge of research, development and process engineering, with operations in Europe, North America and Asia.
It further states that in 1913 Michelin Belux was founded, 22 years after the invention of removable tire by the Michelin brothers; at that time, the headquarters was located in Brussels, but in 2002 it was moved to Zellik (Brabant Flamand); from there, Michelin Belux has since spread Michelin’s vision of innovation, mobility and social progress in Belgium and Luxembourg. The Complainant points out that Michelin Belux also has a logistics center in Gosselies, located near the airport of Charleroi which was founded in 1996 and focuses on two main activities: The distribution of civil engineering and Agro tires in the Benelux region and an assembly center for civil engineering and Agro tires. Finally, there is also a permanent delegation to the European Union, which is located in Brussels whose branch manages the group’s public affairs.
The Complainant is, in particular, the owner of the following MICHELIN trademark Registrations (Annex 24 to the Complaint):
European Union Trade Mark MICHELIN No. 001791243, registered on October 24, 2001 (renewed), in classes 6, 7, 12, 17 and 28;
European Union Trade Mark MICHELIN No. 005670872, registered on February 15, 2008, in classes 3, 4, 7, 9, 11, 12, 20 and 28;
European Union Trade Mark MICHELIN No. 004836359, registered on March 13, 2008, in classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34 and 39.
In addition, the Complainant owns domain names reflecting its trademarks in order to promote its services which, among others, are the following:
<michelin.com> registered on December 1, 1993;
<michelin.fr> registered on July 21, 2008.
The disputed domain name <michelin-france.com> was registered on April 13, 2016, by the Respondent.
The Complainant explains that, on April 14, 2016, it was brought to the knowledge of one of its clients that an email was sent from the email address “[name]@michelin-france.com”, i.e., the day after the registration of the disputed domain name on April 13, 2016. This email contained several attached documents among which one of them indicated that future payments owed to Manufacture Française des Pneumatiques Michelin ought to be transferred to a new bank account. The sender of the email was unknown to the Complainant.
The Complainant submits furthermore that a letter, written on letter-headed paper of Manufacture Française des Pneumatiques Michelin, was allegedly signed by the Chief Financial Officer of Manufacture Française des Pneumatiques Michelin. However, this document has been issued neither by the Complainant nor by the Chief Financial Officer of Manufacture Française des Pneumatiques Michelin. Consequently, the sender of the email has impersonated the Chief Financial Officer of Manufacture Française des Pneumatiques Michelin and the Complainant.
The Complainant also explains that several emails linked with the disputed domain name <michelin-france.com> were displayed in the letter in question, namely “[contact]@michelin-france.com”, “[accounts]@michelin-france.com” and “[name]@michelin-france.com”. The email also contained the identification details of the new bank account which appears to be a Polish account under the name of “JP Market” as well as a certificate of incorporation (“Kbis Extract”) displaying the corporate name “Manufacture Française des Pneumatiques Michelin” and trade name “JP Market”. In this respect, the Complainant submits that it appears that this certificate of incorporation has been subject to forgery since Manufacture Française des Pneumatiques Michelin is not known under the name “JP Market”.
The Complainant further states that, simultaneously with the sending of this email, the Respondent contacted the Complainant’s client by telephone, requesting to acknowledge safe receipt of the new bank details.
The Complainant declares in view of these circumstances so described that it had no other choice but to initiate an UDRP procedure against the Respondent in order to obtain the transfer of the disputed domain name.
5. Parties’ Contentions
The Complainant’s submissions are mainly the following:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights.
The Complainant submits that its MICHELIN trademarks referred to above enjoy worldwide reputation.
In addition, the Complainant contends that the disputed domain name substantially reproduces its trademark MICHELIN in its entirety which has been considered as well known or famous in various UDRP cases.
According to the Complainant, the incorporation of a well-known trademark in its entirety may be sufficient to establish that the disputed domain name is identical or confusingly similar to Complainant’s registered trademark.
In the instant matter, the Complainant considers that whilst the disputed domain name <michelin-france.com> reproduces the trademark MICHELIN with the addition of the geographical term “France” intersected by a hyphen, this is insufficient to avoid any likelihood of confusion; this can induce Internet users into wrongly believing that it is endorsed by the Complainant and linked with Complainant’s presence in France; moreover, taking into account the fraudulent email sent by the Respondent, it is undoubtedly clear for the Complainant that the disputed domain name was registered to deceive Internet users and Complainant’s clients through the creation of confusion.
The Complainant also points out that various UDRP panels have consistently determined that a domain name which consists of a trademark combined with a geographical term is confusingly similar for the purposes of the Policy and does not provide additional specification or sufficient distinction from a complainant or its marks.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said mark. Furthermore, the Complainant points out that the Respondent has no prior rights or legitimate interests in the disputed domain name; furthermore, the registration of the MICHELIN trademark preceded the registration of the disputed domain name for years.
The Complainant also contends the disputed domain name is so similar to the famous MICHELIN trademark of the Complainant that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
The Complainant states that the disputed domain name resolves to an inactive page. Thus, the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name and has therefore failed to show any intention of noncommercial or fair use of the disputed domain name.
(iii) The disputed domain name was registered and is being used in bad faith.
The Complainant submits that 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 Belgium – the home country of the Respondent – and in light of the reputation of the Complainant’s MICHELIN trademark, it is unlikely that Respondent was unaware of the Complainant's rights in the MICHELIN trademark at the time of the registration of the disputed domain name <michelin-france.com>.
The Complainant further recalls that the Respondent had purportedly used similar email compositions as that of the disputed domain name to send the Complainant’s clients email requesting them to proceed to payment on another bank account which does not belong to the Complainant. The Complainant also explains that, allegedly, the Respondent had also forged the certificate of incorporation (“Kbis Extract”) of Manufacture Française des Pneumatiques Michelin in order to make the payer believe that “JP Market” is endorsed by the Complainant. For the Complainant, these elements constitute an obvious case of phishing and fraud aiming at fraudulently convincing the email recipients, in the present case Complainant’s clients, to pay the invoices owed to the Complainant into the bank account of a third party. This pattern of behavior amounts to fraud, swindling, forgery and falsification of records as well as identity theft, according to the Complainant.
The Complainant also argues that the Respondent seems to be engaged in a cybersquatting pattern of behavior, having registered around 24 domain names reproducing famous trademarks including SAMSUNG, VOLKSWAGEN and MINARELLI. The Complainant points out that UDRP panels have acknowledged that the registration of multiple domain names including the Complainant’s trademarks and third-party trademarks shows a pattern of conduct which prevent the owners of those trademarks from reflecting their marks in corresponding domain names; these elements confirm therefore that the disputed domain name has been registered in bad faith by the Respondent in the opinion of the Complainant.
The Complainant still points out, as stated by previous UDRP panels, that in the absence of any license or permission from the Complainant to use such a widely known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.
According to the Complainant, as the disputed domain name is confusingly similar to the Complainant’s trademark, previous UDRP panels have ruled that a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site.
The website at the disputed domain name <michelin-france.com> being currently inactive, the Complainant relies on UDRP cases that consider that the requirements of paragraph 4(a)(iii) can be satisfied in such cases, and that the Panel must give close attention to all the circumstances of Respondent’s behavior, which is clearly fraudulent in the present case.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(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.
The Panel has 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, pursuant to paragraph 15(a) of said Rules.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Language of the Proceeding
The Complainant has requested that English be the language of the administrative proceeding despite the fact that that French was the language of the Registration Agreement for the disputed domain name. The Complainant essentially argued that there was a high probability, under the circumstances, that the Respondent does not speak French and would, thus, not understand the proceedings, also with a view to ensure procedural fairness, English being the primary language in international relations, English should prevail as the language of this proceeding.
The Panel notes that the Respondent did not express any view.
Paragraph 11(a) of the Rules concerning the language of the proceedings, provides that 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. Such a provision gives some discretionary power to the Panel, after having considered the circumstances of the case. Relying on these, the Panel finds that English will be the language of the administrative proceeding and has proceeded to render its decision in English accordingly.
B. Request for production of additional document(s)
In the course of the administrative proceeding, but after the filing of the Complaint, the Complainant sought permission from the Panel to file additional information for exclusive consideration of the Panel.
Paragraph 12 of the Rules, regarding further statements, provides that in addition to the Complaint and the Response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.
The Panel shall not grant such a request, the information available in the case file submitted at the time of filing of the Complaint being sufficient enough to enable the Panel to reach appropriate findings.
C. Identical or Confusingly Similar
The Complainant has established its rights in the trademark MICHELIN.
The Panel follows the UDRP cases which refer to the fact that a disputed domain name including geographic terms such as “France” does not affect the confusing similarity, especially of a trademark which enjoys worldwide reputation.
The Panel finds therefore that the disputed domain is confusingly similar to the Complainant’s trademark.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the disputed domain name. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867).
The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant has not granted any license or otherwise permitted the Respondent to use the Complainant’s trademark or to apply for any domain name incorporating the Complainant’s trademark. Moreover, the Respondent is not known by the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name without it being necessary to examine the other grounds set out in the Complaint and referred to above.
The Panel finds therefore that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Anyone of the following behaviors is sufficient to support a finding of 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 the 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 online 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 already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are to be established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
In the instant matter, the Panel finds that the Respondent knew or should have known, at the time of the registration of the disputed domain name <michelin-france.com>, of the existence of the Complainant’s trademarks right over MICHELIN which were, at least well known, if not famous. The Panel concludes therefore that bad faith registration is proven.
Regarding bad faith use, that is also the case. The Panel considers that the Respondent, having registered more than 20 domain names that reproduce well-known trademarks, has engaged itself in a cybersquatting pattern of behaviour (see Annex 15 to the Complaint). Moreover, the Complainant has established that the website at the disputed domain name is currently inactive (see Annex 1 to the Complaint); this can also be considered as bad faith use of the disputed domain name (see NC Numericable contre SARL HTV, M. Hervé Claude Loza, WIPO Case No. D2014-1363; Air Austral c. WWW Enterprise, Inc., WIPO Case No. D2004-0765; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel takes note of the Complainant’s assertions regarding the alleged fraudulent behavior of the Respondent discussed above, and finds that it need not consider such in order to make a finding of bad faith registration and use of the disputed domain name in the circumstances of this case.
The Panel concludes therefore that bad faith registration and use within the general meaning of paragraph 4(a)(iii) and, in particular paragraph 4(b)(ii), of the Policy is established.
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-france.com> be transferred to the Complainant Compagnie Générale des Etablissements Michelin.
Date: June 10, 2016