WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Domain Hostmaster, Customer ID: 80528735543115, Whois Privacy Services Pty Ltd / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT
Case No. D2017-0114
1. The Parties
Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Domain Hostmaster, Customer ID: 80528735543115, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT of the Isle of Man, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <michelinnorthamerica.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2017. On January 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2017, 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 Complainant on January 24, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 27, 2017.
On January 30, 2017, Complainant forwarded to the Center an email it had received from Respondent.
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 Respondent of the Complaint, and the proceedings commenced on February 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 24, 2017.
The Center appointed Bernhard Meyer as the sole panelist in this matter on March 10, 2017. 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
Complainant, Compagnie Générale des Etablissements Michelin, is a leading tire company, organized under French law, which pursues its diversified business in more than 170 countries around the world. It employs a work force exceeding 110,000 employees and operates 68 production plants in 17 countries. Complainant also operates a technology Center for research and development in North America and a network of international commercial agencies.
Complainant’s trademark, MICHELIN, enjoys a worldwide reputation and is registered, amongst others, as follows:
- International Trademark MICHELIN, No. 348615, registered on July 24, 1968, covering classes 1, 6, 7, 8, 9, 12, 16, 17 and 20; and
- International Trademark MICHELIN, No. 1245891, registered on December 10, 2014, covering classes 35, 36, 39, 40, 41, 44 and 45.
Complainant is the holder of, amongst others, the domain names <michelin.com> and <michelinusa.com>, both registered many years before the disputed domain name.
Respondent registered the disputed domain name on March 10, 2010. The disputed domain name resolves to a website displaying pay-per-click links. In an email correspondence between the Parties of February 27, 2017, Respondent also offered to sell the disputed domain name to Complainant.
5. Parties’ Contentions
Complainant submits that the disputed domain name <michelinnorthamerica.com> is identical or at the least confusingly similar to the trademark MICHELIN in which it has rights.
Moreover, Complainant contends that Respondent has no rights or legitimate interests with respect to the disputed domain name since no rights to use or register the MICHELIN trademark were granted by Complainant to Respondent and the Parties are not affiliated or associated with each other.
Finally, Complainant argues that Respondent has registered and used the disputed domain name <michelinnorthamerica.com> in bad faith since Respondent made unauthorized use of Complainant’s goodwill and reputation for its own commercial gain.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, notwithstanding Respondent’s default, Complainant must establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; that
(ii) Respondent has no rights or legitimate interests with respect to the domain name; and that
(iii) the domain name was registered and is being used in bad faith.
The Panel reviews the different elements in the following.
A. Identical or Confusingly Similar
The disputed domain name <michelinnorthamerica.com> incorporates Complainant’s trademark MICHELIN in its entirety, with the addition of the geographical term “North America”. The addition of a geographical term, such as “North America”, to a trademark, is, in and of itself, not sufficient to avoid a finding of confusing similarity. The geographical term may rather increase confusion (see Société des Produits Nestlé S.A. v. Pedro Flores, WIPO Case No. D2014-2220). This has been held in many UDRP decisions and forms part of the consensus view among panelists (see WIPO Overview of WIPO Panel Views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9).
Thus, the Panel concludes that the disputed domain name <michelinnorthamerica.com> is confusingly similar to the MICHELIN trademark in which Complainant has rights and Complainant prevails under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel is further convinced, based on Complainant’s undisputed contentions, that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods and services. Nor may Respondent be found to have made a legitimate noncommercial or fair use of the disputed domain name.
Complainant did not authorize Respondent to use Complainant’s MICHELIN trademark, either as a domain name, nor in any other way. However, Respondent set up a website where Complainant’s goods were offered through sponsored links. The said website also indicated that the disputed domain name was for sale to any interested third party. Finally, during the present proceeding, Respondent contacted Complainant’s counsel and offered to sell the disputed domain name for USD 1,000.
Such behavior and course of action is not in conformity with a bona fide offering of goods and services, nor is it a legitimate noncommercial and fair use. Accordingly, Complainant succeeded in establishing a prima facie case that Respondent had no rights or legitimate interests with respect to the disputed domain name and the burden of submitting exonerating evidence shifts to Respondent (see Hotwire, Inc v. Thomas Cunningham, WIPO Case No. D2015-1418). In the absence of such evidence, the Panel holds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Complainant submitted evidence that Respondent, under the disputed domain name, maintained a website offering pay-per-click links to Complainant’s goods without authorization. Moreover, a link on Respondent’s website offered the disputed domain name for sale. Finally, upon having been put on notice of the Complaint filed against Respondent, Respondent offered Complainant’s counsel to sell the disputed domain name, using the following words: “We would like to transfer this domain name to you. In exchange for a reasonable out of pocket costs to us of $1000. You guys can recover your filing fees with WIPO in addition to save your client a substantial amount of fees in this case.”
The unauthorized use of the disputed domain name for pay-per-click links, and the attempt to sell the disputed domain name to the legitimate trademark owner at an elevated price, are clear indications of Respondent’s bad faith, both in registering and using the disputed domain name; see paragraph 4(b)(i) of the Policy. Respondent tried to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant’s trademark MICHELIN.
Considering the above, the Panel, finds that paragraph 4(a)(iii) of the Policy has also been satisfied.
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, <michelinnorthamerica.com>, be transferred to Complainant.
Bernhard F. Meyer
Date: March 23, 2017