WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin, Michelin Recherche et Technique S.A. v. Kaheng Cheng
Case No. D2017-0233
1. The Parties
The Complainants are Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, and Michelin Recherche et Technique S.A. of Fribourg, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Kaheng Cheng of Hong Kong, China.
2. The Domain Names and Registrar
The disputed domain names <bfgoodrichrecalls.com> and <michelinrecalls.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 7, 2017. On February 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 8, 2017, 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 February 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 10, 2017.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on March 15, 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
The Complainants are two related companies, which operate in the tires sector and are present in more than 170 countries worldwide, including in Asia. They are best known for the manufacture and commercialization under the trademarks MICHELIN and BFGOODRICH of tires for every type of vehicle, including airplanes, automobiles, bicycles/motorcycles, earthmovers, farm equipment and trucks. Further, they publish travel guides, hotel and restaurant guides, maps and road atlases as well as offer other related services and provide information to their customers about product's defects by issuing voluntary "safety recalls".
The Complainants use the marks MICHELIN and BFGOODRICH to identify their products, and the mark MICHELIN to identify their network of commercial agencies, dealers and distributors and their website, holding several trademark registrations throughout the world for these marks. In Hong Kong, China, the Complainants hold Trademark Registration No. 1990B1584 for MICHELIN in class 12, which was registered on September 7, 1978, Trademark Registration No. 1996B02490AA for MICHELIN in classes 6, 11, 14, 18 and 21, which was registered on September 22, 1993, and Trademark Registration No. 1990B0709 for BFGOODRICH in class 12, which was registered on September 14, 1985.
Further, the Complainants own several domain names reflecting the mark MICHELIN, which are used to promote their goods and services: among others, <michelin.com> which was registered on December 1, 1993, <michelin.hk>, which was registered on April 8, 2004, and <michelin.com.hk>, which was registered on December 22, 2003.
The disputed domain names were registered on July 19, 2007, and both are inactive.
5. Parties' Contentions
The Complainants assert that the disputed domain names are confusingly similar to their marks MICHELIN and BFGOODRICH, for which they claim well-known character and reputation. Each of the disputed domain names reproduces, in their entirety, one of the Complainants' marks as their most dominant beginning element, followed by the generic term "recalls", which does not influence the similarity between these trademarks and the disputed domain names. On the contrary, the generic term "recalls" increases the likelihood of confusion as it has been commonly used by the Complainants to inform their customers about defects in products by issuing "safety recalls". Furthermore, the mere adjunction of the generic Top-Level Domain ("gTLD") ".com" is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity, and the worldwide extensive use of the Complainant's marks may contribute to increase the likelihood of confusion and association.
The Complainants further assert that before starting the UDRP proceeding, they made some efforts to resolve this matter amicably, but the Respondent claimed that the disputed domain names would be used in relation to a public service and offered to sell them for USD 3,000.
Furthermore, the Complainants assert that the Respondent has no rights or legitimate interests in the disputed domain names. The registration of the trademarks MICHELIN and BFGOODRICH preceded the registration of the disputed domain names for years and the Respondent is not affiliated with the Complainants in any way, nor has he been authorized by the Complainants to use and register these trademarks, or to seek registration of any domain name incorporating said marks. Besides, the disputed domain names are inactive, the Respondent not having made any reasonable and demonstrable preparations to use them, and, consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain names.
Instead, considering the prior correspondence between the Parties, the Complainants infer that the only reason why the disputed domain names were registered is for the purpose of selling them for valuable consideration in excess to their documented out-of-pocket costs of registration.
The Complainants assert that the Respondent registered and uses the disputed domain names in bad faith. The worldwide reputation and well-known character of the marks MICHELIN and BFGOODRICH, including Hong Kong where the Respondent is located, makes it unlikely that the Respondent was not aware of the Complainants' rights. The Respondent knew or should have known these trademarks. The fact that not only one but two of the Complainant's trademarks were reproduced in the disputed domain names, as well as their association with the generic term "recalls", which refers to the Complainants' "safety recalls", clearly indicates that the Respondent had these trademarks in mind while registering the disputed domain names.
Besides, the Complainants assert that under Section 2 of the ICANN Policy there is a registrant's duty to verify that the registration of any domain name would not infringe the rights of any third party before registering said domain name, and a quick trademark search would have revealed to the Respondent the existence of the Complainants' trademarks, or even a simple search via Google or any other search engine using the keywords "michelin" and "bfgoodrich" would demonstrate their existence as all first results relate to the Complainants' products or news. Taking into account the worldwide reputation of the Complainants and their trademarks, as well as the high level of notoriety of the Complainants, it is hard to believe that the Respondent was unaware of the existence of the Complainants and their trademarks at the time of registration of the disputed domain names.
Finally, the Complainants assert that the Respondent uses the disputed domain names in bad faith, because although they are currently inactive, passive holding does not preclude a finding of bad faith when the circumstances in the Respondent's behavior indicate the absence of bona fide use. It is likely that the Respondent registered the disputed domain names in an attempt to mislead Internet users and to prevent the Complainants from using their trademarks in these domain names. Furthermore, the Respondent's offer of selling the disputed domain names for a sum higher than their out-of-pocket registration expenses, amounting to 3,000 USD, reveals the Respondent's bad faith.
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
The Panel notes that the Complainants are part of the same corporate group, and have a common grievance against the Respondent. The Panel finds it equitable and procedurally efficient for the Complaint to be brought by two related complainants.
A. Identical or Confusingly Similar
The first element of the Policy concerns only the identity or confusing similarity of the disputed domain name and a mark in which the complainant has rights, comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. In cases involving only slight differences in punctuation or spelling, UDRP panels regularly find sufficient confusing similarity to proceed to a consideration of the other Policy elements. See, e.g., Teva Pharmaceutical USA, Inc. v. Mode L, WIPO Case No. D2007-0369 and Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.
The Complainants indisputably have rights in the registered marks MICHELIN and BFGOODRICH. The disputed domain names incorporate these marks, in their entirety, as the first element of each disputed domain name, followed by the term "recalls", which is a dictionary term that appears as a secondary non-distinctive element.
Accordingly, this Panelist finds that the disputed domain names are confusingly similar to the Complainants' marks. They reproduce and incorporate as the most dominant element, the Complainants' marks MICHELIN and BFGOODRICH, followed by the generic term which is commonly used by the Complainants in their activity. Therefore, the Panel concludes that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
Here, the Complainants rely on the fact that they have not granted any authorization to the Respondent and there is no evidence that the Respondent has any other rights or made any demonstrable preparations to use the disputed domain names for any legitimate noncommercial or fair purpose. The disputed domain names are inactive. This effectively shifts the burden to the Respondent to produce evidence of rights or legitimate interests in the disputed domain names.
The Respondent mentioned in its reply to the cease-and-desist letter sent by the Complainants that the disputed domain names would be used in relation to a public service, but the Respondent has not replied to the Complaint and has not showed any evidence of such alleged purpose.
A respondent's default does not automatically result in a decision in favor of the complainant. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, consulting a repository such as the Internet Archive (at "www.archive.org") in order to obtain an indication of how the disputed domain names were used in the past, the Panel does not find any evidence that the Respondent has any rights or legitimate interests in the disputed domain names to rebut the Complainant's prima facie case to the contrary. The disputed domain names have been inactive since their registration for nearly ten years. This circumstance together with the Respondent's offer to sell the disputed domain names for USD 3000, leads the Panel to consider that the main interest of the Respondent has been to obtain an economic profit by their selling. Therefore, the Panel concludes that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), obliges the complainant to establish that the disputed domain name "has been registered and is being used in bad faith".
At the time of registration, due to the worldwide well-known character of the trademarks MICHELIN and BFGOODRICH, recognized in several UDRP decisions cited by the Complainants, as well as their extensive presence over the Internet, it is very difficult to find that the Respondent did not know about these trademarks and registered the disputed domain names not having in mind these famous marks. It is especially difficult to find this considering that both disputed domain names reproduce two trademarks of the same undertaking, adding the same word "recalls", which is also commonly used by the Complainants in their customer relationships to announce information about defects in their products.
The Complainants have demonstrated their use of the term "recalls" in their customer relationship activity. Furthermore, performing independent research over the Internet, this Panelist finds that a simple search over the Internet of the words "michelin recalls" and "bfgoodrich recalls" reveals a common use of the word "recalls" by the Complainants in their activity and their relationships with their customers. Therefore, the addition of the term "recalls" to the marks MICHELIN and BFGOODRICH, does not avoid the potential likelihood of confusion with the Complainants' trademarks. On the contrary, this term may increase the risk of confusion and association.
Further, the Policy's non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
"(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 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."
As the Complainants argue that the reply to their cease-and-desist letter by the Respondent was an offer to sell the disputed domain names for valuable consideration in excess of the documented out-of-pocket costs directly related to the registration of the disputed domain names. This circumstance together with all other circumstances of this case lead the Panel to conclude that the main purpose of registration of the disputed domain names was their selling to the Complainants or to their competitors.
Further, the registration of the disputed domain names by the Respondent has prevented the legitimate owners of the trademarks MICHELIN and BFGOODRICH from reflecting these marks in corresponding domain names that would be the natural way to inform the Complainants' customers about their "safety recalls".
Accordingly, the Panel concludes that the Complainants have met their burden of establishing that the Respondent registered and is using the disputed domain names in bad faith under the third element of Policy.
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 <bfgoodrichrecalls.com> and <michelinrecalls.com> be transferred to the Complainants.
Reyes Campello Estebaranz
Date: March 22, 2017