WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S.A. v. PrivacyDotLink Customer 1220239, PrivacyDotLink Customer 1220680, PrivacyDotLink Customer 1235536 / ALEX HVOROST
Case No. D2016-1991
1. The Parties
The Complainants are Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France and Michelin Recherche et Technique of Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is PrivacyDotLink Customer 1220239, PrivacyDotLink Customer 1220680, PrivacyDotLink Customer 1235536 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / ALEX HVOROST of Rostov-On-Don, Rostovskaja Oblast, Russian Federation.
2. The Domain Names and Registrars
The disputed domain names <kleber-shop.xyz>, <kormoran.xyz>, <riken-shop.xyz> are registered with
Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2016. On October 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 4, 2016, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 6, 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 October 11, 2016.
The Center verified that the Complaint together with 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 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on November 21, 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 Complainants are well-known tire manufacturers, and own a number of trademark registrations around the world for their marks KLEBER, KORMORAN and RIKEN. Among those registrations are the following:
International trademark No. 725741 for the mark KLEBER, dated of January 5, 2000;
International trademark No. 631001 for the mark KORMORAN, dated of December 19, 1994; and
International trademark No. 622981 for the mark RIKEN, dated of July 11, 1994.
The disputed domain names were registered on June 1, 2016. As of the time of the filing of the Complaint, each of the disputed domain names resolved to inactive pages. The Complainants sent cease-and-desist letters to the Respondent, and tried to resolve the matter amicably. But the Respondent did not respond to the Complainants’ overtures.
5. Parties’ Contentions
The Complainants contend that the disputed domain names are identical or confusingly similar to the Complainants’ registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to each disputed domain name, the Complainants must prove each of the following, namely that:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the disputed domain names are identical or confusingly similar to trademarks in which the Complainants have rights. The Complainants’ marks have been well-known in various jurisdictions around the world, and are each the subject of trademark registrations that predate the registrations of the disputed domain names by many years. The addition of the generic “-shop” to the Complainants’ marks in two of the disputed domain names, and the inclusion of the generic top level “.xyz” to all three domain names do nothing to meaningfully differentiate the disputed domain names from the Complainants’ trademarks.
Accordingly, the Complainants have met this first element of the UDRP.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainants make that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a 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 Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.
The Panel credits the Complainants’ assertions that the Respondent is not affiliated with the Complainants in any way nor has he been authorized by the Complainants to use and register their trademarks, or to seek registration of any domain name incorporating said marks. Further, the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain names – they simply resolve to inactive websites. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain names.
The Panel finds that the Complainants have met this second element of the UDRP.
C. Registered and Used in Bad Faith
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interest. See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. The Complainants are well-known and have registered trademarks. The Respondent has registered domain names reproducing not just one, but three trademarks belonging to the Complainants. This cannot be a coincidence. On the contrary, this constitutes evidence that the Respondent knew about the Complainants and their trademarks at the time of registration of the disputed domain names.
Given these circumstances, taking into account all of the above, the Panel cannot conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainants have succeeded on this third element of the UDRP.
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 names, <kleber-shop.xyz>, <kormoran.xyz>, and <riken-shop.xyz> be transferred to the Complainants.
Evan D. Brown
Date: December 5, 2016