WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Juan Serrano Diaz
Case No. D2017-1093
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Juan Serrano Diaz of Malagon, Spain.
2. The Domain Name and Registrar
The disputed domain name <sealmichelin.com> is registered with Acens Technologies, S.L.U. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 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 Registrar also informed the Center that the language of the registration agreement for the disputed domain name is Spanish.
On June 7, 2017, the Center requested the Parties to provide comments on the language of proceedings. On the same date, the Complainant sent a communication to the Center, requesting English to be the language of proceedings, and referring to the arguments presented in the Complaint. The Respondent did not submit any comments in this regard.
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 in English and Spanish, and the proceedings commenced on June 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2017. The Center received a communication from the Respondent by post on June 28, 2017. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties it would proceed to panel appointment on July 7, 2017.
The Center appointed Andrea Dawson as the sole panelist in this matter on July 17, 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. Procedural Issues Language of the proceedings
The language of the proceedings is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise under paragraph 11 of the Rules.
As mentioned by the Complainant, it is important to consider the spirit of paragraph 11 of the Rules in conjunction with the requirements of paragraph 10 of the Rules that determines that the parties are treated equally and that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.
The Panel must consider all the relevant circumstances when deciding whether to allow the proceedings to be conducted in a language other than that of the registration agreement. Among the factors that should be taken into consideration are the additional expenses and delays likely to be incurred if the Complaint had to be translated, whether the Respondent can understand and effectively communicate in the language in which the Complaint has been submitted, if maintaining the Complaint in the language submitted is a real disadvantage to the Respondent, if the Respondent has been given a fair chance to object to the language of the proceeding and has decided not to.
The Complainant has submitted a request for English to be the language of the administrative proceedings.
Such request includes arguments and supporting material as to why the proceedings should be conducted in English.
Among the arguments set forth, the Complainant indicates that it has no knowledge of the Spanish language. That to proceed in such language, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost of the present proceeding. Consequently, the use of another language other than English in the proceeding would impose a burden on the Complainant which must be deemed significant.
The Complainant further indicates that it should be noted that the Respondent has produced a letter written both in English and Spanish, thus it can be assumed that the Respondent has knowledge of the English language.
The Panel is prepared to infer that the Respondent is able to understand and communicate in English based on the above-mentioned communication.
The Panel further notes that no objection was made by the Respondent to the Complaint being in English nor any request made that the proceedings be conducted in Spanish, despite the Center's request for the Respondent's comments on the language of proceedings sent to the Parties on June 7, 2017, in Spanish and English. The Respondent had ample opportunity to raise objections or make known his preference, but did not. On the contrary, when communicating with the Center he did so in both Spanish and English.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
5. Factual Background
The Complainant is one of the leading tire companies in the world.
The Complainant is dedicated to designing and distributing the most suitable tires, services and solutions for its clients' needs. It also provides digital services, maps and guides to its clients and develops
high-technology materials that serve the mobility industry.
The Complainant has its headquarters in Clermont-Ferrand, France; it has 111,700 employees and operates 68 production facilities in 17 countries which together produced 187 million tires in 2016. More than 8,000 people work for the Complainant in Spain. Spain plays a major role in the context of the Complainant's production.
The Complainant has an important industrial presence in Spain with four factories, namely, Lasarte, Vitoria, Aranda de Duero and Valladolid. They offer a wide range of products and services which are commercialised in the country: tourism, truck tires, agricultural, industrial and for two-wheeled vehicles, as well as services for tourism, maps and guides.
The Complainant is the owner of numerous trademark registrations for the trademark MICHELIN around the world; in particular, it is the owner of the following MICHELIN Trademark Registrations: European Union TradeMark MICHELIN No. 001791243, registered October 24, 2001, duly renewed and covering goods in classes 6, 7, 12, 17 and 28; International Trademark MICHELIN No. 348615, registered July 24, 1968, duly renewed, and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17, and 20.
The Complainant owns numerous domain names containing the trademark MICHELIN, including <michelin.com> registered on December 1, 1993, <michelin.fr> registered on July 21, 2008, <michelin.es> registered on July 23, 1997 and <viamichelin.es> registered on August 19, 2002.
The disputed domain name was registered on March 21, 2007.
Per the evidence provided by the Complainant the disputed domain name does not resolve to an active website.
6. Parties' Contentions
The Complainant asserts that its MICHELIN trademarks enjoy a worldwide reputation, and that it owns numerous MICHELIN trademark registrations around the world.
The Complainant further asserts that the disputed domain name <sealmichelin.com> reproduces the trademark MICHELIN with the addition of the generic term "seal", and that the likelihood of confusion is enhanced since the Complainant offers products and services under the name of "Michelin Selfseal". The Complainant argues that, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant's trademark, which could mislead Internet users into thinking that he is, in some way, associated with the Complainant.
The Complainant states that the Respondent is not affiliated with the Complainant in any way nor has he been authorised by the Complainant to use or register its trademarks.
Moreover, the Complainant asserts that the Respondent is not commonly known by the name "Michelin". And that this is supported by the WhoIs record whereby the Respondent is known under the name of Juan Serrano Diaz.
The Complainant adds that the disputed domain name is so identical to the famous MICHELIN trademark and to its activities under the name "Michelin SelfSeal", that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
The Complainant further adds that the disputed domain name has never been used actively since its registration in 2007, which clearly shows that the Respondent does not have any interest in relation to the disputed domain name. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name.
The Complainant asserts that the Respondent is not using the disputed domain name for a legitimate business, nor has he made demonstrable preparations to use the disputed domain name in relation to a bona fide offering of goods or services.
The Complainant finally states that it may be inferred from the Respondent's registration of a domain name that is confusingly similar to its well-known MICHELIN trademark that the disputed domain name was registered in bad faith. The Complainant indicates that it is clear that, given the famous and distinctive nature of the MICHELIN trademark, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the Complainant's marks at the time of the registration of the disputed domain name, which clearly suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it.
The Complainant asserts that the fact that the disputed domain name has been inactive since its registration does not preclude a finding of bad faith.
The Respondent did not reply to the Complainant's contentions.
The Center received a communication from the Respondent by post on June 28, 2017, written in English and Spanish. In such communication, the Respondent states that his "email or domain" is not <sealmichelin.com> and that his website is "www.neumaticsseal.com". The letter is signed by "Seal Michelin".
The Panel notes that according to paragraph 3(a)(i) of the Supplemental Rules, any submission that may or is required to be made to the Center or to an Administrative Panel shall be made by electronic mail (email) using the address specified by the Center. Therefore, the Panel will not consider the Respondent's communication sent to the Center by post.
Nonetheless, the Panel notes that the above-mentioned communication is identical to the response sent by the Respondent to the Complainant's cease and desist letter, and which has been submitted by the Complainant as annex to the Complaint. Therefore, the Panel's consideration of the Respondent's communication sent by post would not have any impact in the present decision.
7. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights to the MICHELIN trademarks. The disputed domain name, which combines the Complainant's trademark with the term "seal" is confusingly similar to the registered trademarks of the Complainant.
The Panel agrees with the Complainant's opinion that the addition of the term "seal" is not sufficient to avoid the confusing similarity between the disputed domain name and the Complainant's trademark.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark MICHELIN in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
Prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to come forward with evidence to support a finding that he does have rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name considering: a) the lack of authorization from the Complainant for the Respondent to use its MICHELIN trademark, or to register any domain name incorporating said mark; b) the lack of evidence that the Respondent has made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; and c) that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Moreover, the Respondent has not come forward to assert any rights or legitimate interests he may have in the disputed domain name, and the record is devoid of any indication of such a right or legitimate interest. Furthermore, the Respondent's reply to the cease and desist letter sent by the Complainant indicated that his "email or domain is not <sealmichelin.com>" and that he is not using the disputed domain name in any way. Such reply was signed by "Seal Michelin", but the Respondent did not provide any further proof that he is actually known as "Seal Michelin" and the cover letter to such response indicates the sender is actually "Neumaticos Seal".
Given the possibility to justify or explain the reason why he registered the disputed domain name, the Respondent simply preferred to indicate that he is not using the disputed domain name in any way.
Consequently, if the Respondent himself has admitted that he is not giving the disputed domain name any legitimate use, this Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy, and that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel finds that the Complainant has submitted arguments, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with knowledge of the Complainant's rights in the Complainant's trademarks and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name.
Furthermore, the Panel finds that it is reasonable to conclude that the Respondent had knowledge of the Complainant's existence and the services it provided. The Complainant received a response to the cease and desist letter sent to the Respondent signed by "Michelin Seal" and with a cover letter signed by "Neumaticos Seal S.L.". The Panel notes that the term "neumáticos" in Spanish means tires, precisely the scope of business of the Complainant, which may indicate that the Respondent has business in the same area and, therefore, knew or should have known of the Complainant.
Consequently, it is fair to conclude that the Respondent must have had the Complainant's trademark in mind when registering the disputed domain name, especially taking into consideration that the Complainant's trademark MICHELIN is widely known.
Moreover, noting the assertions and documents provided by the Complainant, the Panel considers, on the balance of probabilities, that the Respondent's real intention was to try to give the impression of being associated with the Complainant and to take advantage of the reputation and goodwill associated with the Complainant's MICHELIN trademark.
Finally, the Panel notes that the disputed domain name does not resolve to an active website. In view of the circumstances of this case, the Panel finds that the Respondent's passive holding of the disputed domain name does not prevent a finding of bad faith use.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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, <sealmichelin.com>, be transferred to the Complainant.
Date: July 27, 2017