WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. OOO "AMBID"
Case No. D2017-1431
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is OOO "AMBID" of Moscow, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <michelin-l.xyz>, <michelin-online.xyz> and <michelins.xyz> are registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2017. On July 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 27, 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 Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain names is Russian. On July 28, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. On July 28, 2017, the Complainant requested that English be the language of the proceeding. The Respondent did not reply to the Center's notification or the Complainant's submission.
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 August 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 31, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on September 8, 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 one of the leading tire companies in the world which is headquartered in Clermont−Ferrand, France. The Complainant is also present on the Russian market.
The Complainant is the owner of the following trademark registrations:
- International Trademark Registration MICHELIN No. 492879, designating, inter alia, the Russian Federation, registered on May 10, 1985, duly renewed, and covering goods in class 12;
- International Trademark Registration MICHELIN No. 740073, designating, inter alia, the Russian Federation, registered on August 8, 2000, duly renewed, and covering goods in classes 6, 7, 12 and 17;
- International Trademark Registration MICHELIN No.816915, designating, inter alia, the Russian Federation, registered on August 27, 2003, duly renewed, and covering services in classes 35, 37, 39 and 42.
The disputed domain name <michelins.xyz> was registered on November 15, 2016, the disputed domain name <michelin-online.xyz> was registered on December 26, 2016, and the disputed domain name <michelin-l.xyz> was registered on February 16, 2017.
The disputed domain names <michelins.xyz> and <michelin-online.xyz> currently resolve to inactive pages, whereas <michelin-l.xyz> directs to an error page of the registrar and hence it can be regarded as an inactive page as well. In February 2017, the disputed domain names <michelins.xyz> and <michelin-online.xyz> were directing towards a page in Russian which contained information about the Complainant and its activities as well as the Complainant's logo.
The Complainant sent a cease-and-desist letter to Respondent on the basis of its trademark rights concerning, i.e., the disputed domain names but the latter never replied back.
5. Parties' Contentions
Firstly, the Complainant contends that the disputed domain names are identical or at least confusingly similar to Complainant's trademark as they substantially reproduce the MICHELIN mark. According to the Complainant, the disputed domain name <michelins.xyz> reproduces the MICHELIN mark with a mere addition of the letter "s" which is an example of typosquatting. The Complainant also asserts that the addition of the generic term "online" to Complainant's MICHELIN mark in the disputed domain name <michelin-online.xyz> is insufficient to avoid any likelihood of confusion. The Complainant emphasizes that the disputed domain name <michelin-l.xyz> which include the MICHELIN mark with the association of the letter "l" intersected by a hyphen is not distinctive as the dominant portion of each disputed domain name is the Complainant's mark.
Secondly, the Complainant states that the Respondent has no legitimate interests in the disputed domain names. According to the Complainant that the Respondent is neither known by the name of "Michelin" nor affiliated with the Complainant in any way, nor has he been authorized or licensed by the Complainant to use and register its mark, or to seek registration of any domain names incorporating the aforesaid mark. The Complainant emphasizes that the Respondent has no prior rights or legitimate interests in the disputed domain names as the registration of the MICHELIN marks preceded the registration of the disputed domain names for years. Furthermore, the Complainant asserts that the Respondent has so far neither used nor made any demonstrable preparation to use the domain names in connection with a bona fide offering of goods or services. In the Complainant's opinion, the Respondent was not making a fair or legitimate noncommercial use of the disputed domain names as they previously directed towards an imitation of the Complainant's website in Russian. In addition, the Complainant asserts that an e-mail server has been configured on the disputed domain name <michelin-online.xyz> and there is a high risk that the Respondent is engaged in a phishing scheme.
Thirdly, the Complainant contends that the disputed domain names were registered and are being used in bad faith. According to the Complainant, it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain names. This is because the Complainant is well−known throughout the world including the Russian Federation. Moreover, in the light of the previous pages set up by the Respondent under the disputed domain names, the Complainant asserts that the Respondent has the Complainant's mark and activities in mind at the time of the registration of the disputed domain names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Russian. Paragraph 11(a) of the Rules provides that "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that a need to translate the Complaint from English into Russian would result in substantial expenses and unduly delay the arbitration proceeding. The Respondent was properly notified about the language of the proceeding in English and Russian, and the Respondent has not objected to the Complainant's language request.
Taking all the circumstances into account, including the Respondent's failure to comment on this issue, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
B. Identical or Confusingly Similar
The disputed domain names contain the MICHELIN mark in its entirety. Neither the addition of the letter "s" nor "-l" nor a word "online" serve to render the disputed domain names dissimilar to the Complainant's mark as they are too insignificant to have any real effect in the perception of the mark. Moreover, the adjunction of a generic Top-Level Domain is irrelevant for a finding of confusing similarity (Heineken Italia S.p.A. v. xiongmiao, WIPO Case No. D2016-2193; and Les Laboratoires Servier v. miller / JunZe zhang, WIPO Case No. D2016-2029).
Therefore, the Panel finds that the disputed domain names are confusingly similar to the MICHELIN mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain names: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the MICHELIN mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain names; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, in particular, the use of the disputed domain names to create a website mirroring the Complainant's mark and its website cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain names, the Panel accepts the Complainant's unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain names.
Firstly, the disputed domain names were registered in 2016 and 2017 which is years after the MICHELIN mark was registered. In the Panel's opinion, the notoriety of use of the MICHELIN mark and the similarity of the disputed domain names with the mark itself indicates that the Respondent knew or should have known about the Complainant's rights when registering the disputed domain names (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Secondly, the Respondent has also used the disputed domain names <michelins.xyz> and <michelin-online.xyz> in bad faith which is evidenced by the fact that yet in February 2017, they resolved towards a page in Russian which contained information about the Complainant and its activities as well as the Complainant's logo. Currently, all the disputed domain names resolve to inactive pages, but the fact that a domain name is held passively does not prevent a finding of bad faith (Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004-0245; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232).
Moreover, the Panel finds that the Respondent's failure to answer the Complainant's cease and desist letter can be taken into account in a finding of bad faith. In the absence of a plausible explanation from the Respondent as to how and why his registration and use of the Complainant's mark is appropriate or necessary for the operation of his business or personal affairs, the Panel finds that he registered and used the disputed domain names to take advantage of the worldwide reputation and goodwill of the Complainant and to somehow turn a profit from it.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain names by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, or endorsement of or affiliation with the website, pursuant to paragraph 4(b)(iv) of the Policy, and that the third element of paragraph 4(a) is 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 names, <michelin-l.xyz>, <michelin-online.xyz>, <michelins.xyz>,be transferred to the Complainant.
Date: September 24, 2017