WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Romar Walstra, Walstra Werving Selectie
Case No. D2016-0944
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, , represented by Dreyfus & associés, France.
The Respondent is Romar Walstra, Walstra Werving Selectie of Assen, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <michelin.amsterdam> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2016. On May 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 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 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, and the proceedings commenced on May 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 8, 2016.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 15, 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 is a leading tire company with a global presence in more than 170 countries and with more than 112,000 employees.
The Complainant is the owner of the trademark MICHELIN, registered in several countries and jurisdictions, including as a European Union Trade Mark No. 001791243 registered on October 24, 2001.
The Complainant also operates a number of websites, such as "www.michelin.com" and "www.viamichelin.com".
The disputed domain name was registered on September 2, 2015. The disputed domain name resolves to a web hosting landing page.
5. Parties' Contentions
The disputed domain name is identical or at least confusingly similar to the Complainant's trademark MICHELIN. The disputed domain name reproduces the Complainant's trademark in its entirety and the inclusion of the generic Top-Level Domain ("gTLD") ".amsterdam" increases the confusing similarity as Internet users might understand the combination of the trademark MICHELIN with the gTLD ".amsterdam" as a reference to services offered by Complainant in Europe and particularly in Amsterdam.
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. In addition, the disputed domain name resolves to what the Complainant equates to an inactive page and the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name.
It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. The Complainant is wellknown throughout the world including in the Netherlands the home country of the Respondent. In response to a cease-and-desist letter form the Complainant, the Respondent offered to sell the disputed domain name to the Complainant for EUR 200. This, says the Complainant is evidence of the Respondent's registration and use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(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 is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name contains the Complainant's distinctive and widely known trademark MICHELIN. While typically disregarded for the purposes of comparison under the first element, the Panel agrees with the Complainant's argument that the gTLD ".amsterdam" may increase the level of confusing similarity between the disputed domain name and the Complainant's trademark. Accor v. Domains By Proxy, LLC, DomainsByProxy.com / Abdul-Rasheed Barimah, WIPO Case No. D2016-0011.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not rebutted this by way of a formal response, and the way that the Respondent has been "using" the disputed domain name (see immediately below under C), does not support a finding of rights or legitimate interests. The explanation that was given by the Respondent in correspondence with the Complainant prior to the filing of this proceeding, namely that the disputed domain name was registered on behalf of a client named "Michel" who lives in Amsterdam, was not supported by any facts or evidence and shall therefore be disregarded for the purpose of this proceeding. Accordingly, the Panel finds that there are no facts or circumstances to support the conclusion that the Respondent has any rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use 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 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 of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site or other online 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.
Given the circumstances of the case and in particular the notoriety of the Complainant's trademark and the distinctive nature of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant's mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name <michelin.amsterdam> is parked and not actively used. As first stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and repeated in many subsequent decisions under the UDRP "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith."
The Panel finds that the Respondent's lack of bona fide use of this disputed domain name is likely to disrupt the business of the Complainant. Further, given the fame of the Complainant's MICHELIN mark, it is inconceivable that the Respondent will be able to use the disputed domain name for any plausible purpose that would not interfere with the Complainant's rights. Finally, by registering the disputed domain name the Respondent prevents the Complainant from registering a domain name under the gTLD ".amsterdam" that incorporates its widely known trademark MICHELIN.
The Panel notes that the disputed domain name incorporates the Complainant's trademark, MICHELIN, that no Response has been filed, and that there appears to be no conceivable plausible good faith use that could be made by the Respondent of the disputed domain name. In light of the Respondent's attempt to sell the disputed domain name likely to be in excess of the Respondent's out-of-pocket costs associated with the disputed domain name, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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.amsterdam> be transferred to the Complainant.
Date: July 7, 2016