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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost

Case No. D2016-1923

1. The Parties

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

The Respondent is PrivacyDotLink Customer 1197652 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Alex Hvorost of Rostov-on-Don, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <michelin-shop.xyz> is registered with Uniregistrar Corp (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 21, 2016. On September 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2016, 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 Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 27, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 30, 2016.

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 Respondent of the Complaint, and the proceedings commenced on October 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 28, 2016.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on November 3, 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 in the business of manufacturing and marketing tires under the trademark MICHELIN. The Complainant also provides electronic mobility support services through "www.viamichelin.com" and publishes hotels and restaurant guides, maps, road atlases and travel guides.

The Complainant owns International trademark MICHELIN registration no. 348615, dated July 24, 1968, covering goods in classes: 1, 6, 7, 8, 9,12, 16, 17 and 20. The Complainant owns the domain name <michelin-shop.com> registered on July 4, 2012, the domain name <michelinshop.com>, registered on September 20, 1999 and the domain name <michelin.ru>, registered on November 20, 1998.

The Respondent registered the disputed domain name <michelin-shop.xyz> on June 1, 2016. The disputed domain name is inactive.

5. Parties' Contentions

A. Complainant

The Complainant states it is a leading tire company with its headquarters in France and has a presence in more than one hundred and seventy countries with 112,300 employees. It operates sixty-eight production plants in seventeen countries and has a network of commercial agencies in Europe.

Prior to filing the present dispute, the Complainant states that efforts were made to resolve the dispute by sending a cease-and-desist letter to the Respondent, dated July 5, 2016. As there was no response from the Respondent despite reminders, the Complainant states it has filed the present Complaint on the grounds that:

The disputed domain name is identical or confusingly similar to the Complainant's trademark as it reproduces the MICHELIN trademark along with the term "shop" and the hyphen symbol. Adding a generic term or hyphen is insufficient to influence the finding of confusingly similar to the trademark argues the Complainant. The trademark is well-known and is associated with the Complainant and is therefore likely to mislead the public that the disputed domain name is associated with the Complainant.

It is the Complainant's conviction that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and has not been authorized to use its registered mark. Due to the absence of any license to use the mark, no actual or legitimate use of the disputed domain name could reasonably be claimed by the Respondent. Given the fame associated with the mark, the Respondent cannot state there was an intention of developing a legitimate activity through the disputed domain name. The Complainant asserts that the disputed domain name resolves to an inactive page.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Respondent knew or ought to have known of its trademark, and the Complainant maintains that registration of a domain name that is so obviously connected with the trademark shows opportunistic bad faith registration. The Complainant further argues that there can be no actual or contemplated good faith use of a widely known trademark in the absence of a license or permission from the trademark owner. Reproducing a confusingly similar domain name is likely to divert Internet traffic from the Complainant's site to the Respondent's site. The Complainant asserts that the disputed domain name was registered to prevent its use by the Complainant. Finally, the Complainant argues that passive holding of the disputed domain name, trying to conceal the registrant identity and not replying the Complainant's communications are all indicative of the Respondent's bad faith. The Complainant requests for the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

To obtain the remedy of transfer of the disputed domain name, the Complainant needs to establish three elements under paragraph 4 (a) of the Policy. These are:

(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 lacks rights or legitimate interests in the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first requirement under paragraph 4(a) of the Policy stipulates the Complainant needs to establish that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.

The Complainant has filed evidence that demonstrates its rights in the trademark MICHELIN and that it is an internationally recognized and widely known trademark. Citing inter alia several previous UDRP panel decisions in this regard: Compagnie Générale des Etablissements Michelin v. Issac Goldstein, Hulmiho Ukolen, Poste restant/ Domain Admin, Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2015-1787; Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu, WIPO Case No. D2014-1240; Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang, WIPO Case No. D2013-1418; Compagnie Générale des Etablissements Michelin v. Milan Kovac/Privacy--Protect.org, WIPO Case No. D2012-0634; Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev, WIPO Case No. D2012-0384 and Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy, WIPO Case No. D2012-0045, the Complainant states that its rights in the mark are widely accepted and acknowledged.

The Complainant has provided details of its international trademark registration that dates back to 1968, International trademark MICHELIN registration no 348615, dated July 24, 1968, covering goods in classes: 1, 6, 7, 8, 9, 12, 16, 17 and 20. Further, the Complainant is found to have demonstrated in these proceedings that it has extensively used the MICHELIN trademark for a number of years prior to the registration of the disputed domain name. Based on the evidence, the Panel finds the Complainant has successfully proven its rights in the MICHELIN trademark.

The Panel finds the disputed domain name reproduces the trademark in its entirety along with the term "shop" and the hyphen symbol. It is a well-accepted proposition that reproducing the entire trademark along with a generic term or the inclusion of a hyphen, is insufficient to distinguish the disputed domain name from the trademark as the trademark is the dominant part of the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or a service mark in which the Complainant has rights.

The Complainant has successfully established the first requirement under paragraph 4(a) of the Policy, that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made a prima facie case, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with any allegations or evidence establishing rights in the disputed domain name, the Complainant prevails. The overall burden of establishing prima facie case that the Respondent lacks rights, however rests with the Complainant. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), Paragraph 2.1)

Under the paragraph 4(c) of the Policy, a non-exhaustive exemplary list of circumstances sets out the manner in which a respondent may typically establish rights or legitimate interests in the disputed domain name; these are:

(i) Before notice of the dispute, the respondent's use or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering ofgoods or service; or.

(ii) The respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has not acquired any trade or service mark rights.

(iii) The respondent is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain or to misleadingly divert customers or tarnish the trademark or service mark at issue.

The Complainant has argued that the Respondent has not made any reasonable preparations to use the disputed domain name and has further submitted that the domain name bears such striking resemblance to the mark that it is difficult to conceive of any contemplated legitimate use of the disputed domain name by the Respondent. The Complainant asserts that no license or permission has been given to the Respondent to use the trademark.

The Complainant has also argued that as the disputed domain name resolves to an inactive page, therefore the possibility of the Respondent making any noncommercial or fair use of the disputed domain name is ruled out. Additionally, the Complainant has stated that the Respondent's failure to reply to Complainant's communication gives further inference of the Respondent lack rights or legitimate interests in the disputed domain name.

The Panel finds from the material on record, that there is nothing to suggest the Respondent has made use of the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent's name or business name corresponds to the disputed domain name. The record reveals the name of the Respondent is Alex Hovrost, and that the Respondent has used of a privacy service to conceal the identity of the registrant of the disputed domain name.

The Panel notes that Center has sent the Complaint to the address of the Respondent located in the Russian Federation, and the related documents have been delivered to the said address on October 10, 2016. Despite this, the Respondent has not filed a response or participated in these proceedings. Therefore, the Complainant's assertions remain unrebutted.

The Panel is of the view that, under the circumstances discussed, the confusingly similar use of the Complainant's trademark in the disputed domain name is with an intention to attract Internet traffic based on the reputation associated with the Complainant's trademark. Such use of the disputed domain name is not a basis to find any rights or legitimate interests in favor of the Respondent. Further, as argued by the Complainant, given the resemblance of the disputed domain name with the widely known trademark of the Complainant, it is unlikely that there could be any contemplated legitimate use of the disputed domain name by the Respondent.

The Panel therefore finds that the Complainant has successfully established an unrebutted prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. Accordingly, the second element under paragraph 4(a) of the Policy has been fulfilled by the Complainant.

C. Registered and Used in Bad Faith

The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.

The preponderance of evidence on record suggests that the Respondent ought to have known of the Complainant's rights in the MICHELIN mark at the time of registration of the disputed domain name. First, the widely known reputation of the Complainant's mark is evident from several UDRP decisions and its international trademark registration cited by the Complainant. Second, the Complainant has provided evidence of its presence in the Russian Federation for an extended period and of its widespread use of the MICHELIN trademark in that territory. Third, an Internet search would have revealed the Complainant's pre‑existing rights in respect of the trademark. Fourth, the mere fact that the Complainant has used the trademark for several years prior to registration of the disputed domain name indicates that the Respondent ought to have known of the trademark. The Respondent's intention of registration of the disputed domain name therefore seems to be motivated by the sole purpose of deriving benefit from a known trademark. In the light of the above-mentioned circumstances, the Panel finds that the disputed domain name has been registered in bad faith.

The use of privacy services by the Respondent to hide identity, the Respondent failing to reply or respond in these proceedings, gives rise to further speculation regarding the Respondent's actual motivation in the registration and use of the disputed domain name. Under the circumstances discussed, the registration and use of the disputed domain name, as argued by the Complainant, is unlikely to be legitimate use, given the widely known character of the MICHELIN trademark.

Inactive or passive holding of a disputed domain name that uses a widely known trademark without the permission of the trademark owner, under the circumstances, gives rise to an inference of bad faith use under the Policy. Accordingly, for the reasons discussed, the Panel finds that the disputed domain name is used in bad faith by the Respondent.

The Panel finds the Complainant has successfully established the third element under paragraph 4(a) of the Policy, that the disputed domain name was registered and is being used in bad faith by the Respondent.

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 <michelin-shop.xyz> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: November 17, 2016

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