WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michelin Recherche et Technique S.A. v. PrivacyDotLink Customer 1247178 / Alex Hvorost
Case No. D2017-0235
1. The Parties
The Complainant is Michelin Recherche et Technique S.A. of Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is PrivacyDotLink Customer 1247178 of Seven Mile Beach, 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 <uniroyal.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 February 7, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 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 the Complainant on February 9, 2017 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 February 13, 2017.
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 February 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 8, 2017.
The Center appointed Assen Alexiev as the sole panelist in this matter on March 23, 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 Complainant is part of the Michelin group – a leading tire company manufacturing and marketing tires for all types of vehicles. It also offers electronic mobility support services and publishes travel guides, hotel and restaurant guides, maps and road atlases.
The Complainant owns numerous trademark registrations for UNIROYAL around the world, including the following registrations (the "UNIROYAL trademark"):
- The Australian trademark UNIROYAL with registration No. 1353778 registered on March 31, 2010 for goods in International Class 12;
- The Canadian trademark UNIROYAL with registration No. TMA134560 registered on February 7, 1964 for goods in International Classes 1, 2, 3, 4, 5, 6, 7 and 8; and
- The New Zealand trademark UNIROYAL with registration No. 128485 registered on August 16, 1982 for goods in International Class 12.
The Complainant operates the websites at the domain names <uniroyal-tyres.com>, registered on February 2, 2000, and <uniroyal-tires.com>, registered on June 15, 2012.
The disputed domain name was registered on June 1, 2016. The disputed domain name does not resolve to an active website.
5. Parties' Contentions
The Complainant submits that the disputed domain name is identical or confusingly similar to the UNIROYAL trademark, which previous UDRP panels have considered to be well known or famous. The disputed domain name reproduces this trademark in its entirety, which is sufficient to make the disputed domain name identical or confusingly similar to the trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated to the Complainant and has not been authorized by the Complainant to register any domain name incorporating the UNIROYAL trademark. The Respondent has no prior rights or legitimate interests in the disputed domain name, and the registration of the UNIROYAL trademark preceded the registration of the disputed domain name by a number of years. The Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name as it resolves to a blank page. The Respondent never answered the Complainant's cease-and-desist letters to it.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. According to the Complainant, it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name, given the reputation of the UNIROYAL trademark. Bad faith can be found where a respondent knew of a complainant's trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interests. The disputed domain name reproduces the Complainant's UNIROYAL trademark, which shows that the Respondent was aware of the Complainant when it registered the disputed domain name. The Complainant points out that after the present complaint was filed, the identity of the registrant of the disputed domain name was revealed by the Registrar. The registrant is Alex Hvorost – the same respondent as in the previous UDRP cases Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S.A. v. PrivacyDotLink Customer 1220239, PrivacyDotLink Customer 1220680, PrivacyDotLink Customer 1235536 / ALEX HVOROST, WIPO Case No. D2016-1991 and Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost, WIPO Case No. D2016-1923 involving the same Complainant. According to the Complainant, this shows that the Respondent is a cybersquatter who is aware of Complainant and its trademark rights.
The Complainant submits that, in the absence of any license or permission from the Complainant to use its widely known UNIROYAL trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed, especially since the Respondent has already been twice engaged in domain name disputes regarding the Complainant's trademarks. The Complainant points out that many Internet users attempting to visit the Complainant's website may end up on the Respondent's website, as the disputed domain name is confusingly similar to the Complainant's UNIROYAL trademark. The reproducing of famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as a fair use or use in good faith. In addition, it is likely that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trademark in a domain name.
The Complainant also submits that, before starting the present proceeding, it made some efforts to resolve the dispute amicably. On November 16, 2016, the Complainant sent a cease-and-desist letter to the Respondent, whereby it requested the Respondent to reveal its identity and to transfer the disputed domain name free of charge to the Complainant. The Respondent never replied to the cease-and-desist letter. As no amicable settlement could be found, the Complainant has no other choice but to initiate a procedure under the Policy against the Respondent in order to obtain the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to notify the Complaint and the commencement of this proceeding to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name". In the event of a default, under the Rules, paragraph (14)(b): "[…] the Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent."
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the UNIROYAL trademark.
The Panel notes that it is established practice under the Policy to generally disregard the generic Top-Level Domain ("gTLD"), including new gTLDs, for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ".xyz" part of the disputed domain name.
Therefore, the relevant part of the disputed domain name that has to be examined is its "uniroyal" section. This section of the disputed domain name is identical to the distinctive UNIROYAL trademark.
Taking the above into account, the Panel finds that the disputed domain name is identical to the UNIROYAL trademark, in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not affiliated to the Complainant and is not authorized to use the UNIROYAL trademark or to seek registration of any domain name incorporating this trademark. The Complainant has further pointed out that the registration of UNIROYAL trademark predates the registration of the disputed domain name for years, and that the Respondent does not use the disputed domain name in connection to a bona fide offering of goods or services as it resolves to a blank webpage. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not taken any position on the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.
The disputed domain name incorporates the distinctive UNIROYAL trademark entirely. The UNIROYAL trademark has been registered for many years. The Respondent has been involved in two other proceedings under the Policy where it was found to lack rights and legitimate interests in the domain names that were identical or confusingly similar to trademarks of the Complainant or of its affiliates, and to have acted in bad faith in respect of their registration and use. The circumstances of this case lead the Panel to reach a conclusion that the Respondent is likely to have been well aware of the business of the Complainant and to have intended to exploit the popularity of the Complainant and of the UNIROYAL trademark to attract the attention of Internet users when it chose to register the disputed domain name. In the Panel's view, such conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondent.
Therefore, the Panel finds that the Complainant's prima facie case has not been rebutted, and that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed in relation to the issue of rights and legitimate interests, the Respondent has already been found to have acted in bad faith in two other proceedings under the Policy involving the same Complainant or its affiliates. This satisfies the Panel that the disputed domain name is likely to have been registered with knowledge of the reputation and goodwill of the Complainant and of its UNIROYAL trademark, which at that point in time had been registered for many years. In this situation, the Respondent is likely to have registered the disputed domain name in view of its attractiveness to consumers, while not having obtained an authorization from the Complainant for the registration. This conclusion supports a finding that the Respondent has registered the disputed domain name in bad faith.
The disputed domain name does not resolve to an active website. However, in view of the distinctiveness and notoriety of the UNIROYAL trademark and the identity between it and the disputed domain name, it appears to the Panel that the Respondent cannot put the disputed domain name to any legitimate use. In the absence of any explanation from the Respondent, registering an identical domain name to the Complainant's mark may be suggestive of the Respdondent's intent to seek unjust benefit from the notoriety of the Complainant's mark. On the basis of all the above the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <uniroyal.xyz> be transferred to the Complainant.
Date: April 25, 2017