WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. AS Ahmed
Case No. D2017-1466
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France represented by Dreyfus & associés, France.
The Respondent is AS Ahmed of Middlesbrough, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Name and Registrar
The disputed domain name <michelinsca.com> (the "Domain name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 28, 2017. On the same day, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain name. On the same day, 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 August 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 24, 2017.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 1, 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 and its MICHELIN trademarks enjoy a worldwide reputation.
The Complainant owns numerous MICHELIN trade mark registrations around the world. The Complainant is notably the owner of the following trademark registrations (hereinafter together referred to as the "Trade marks"):
European trade mark MICHELIN No. 004836359, registered on March 13, 2008, covering goods and services in classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34, 39;
European trade mark MICHELIN No. 001791243, registered on October 24, 2001, duly renewed and covering goods in classes 6, 7, 12, 17, 28;
European trade mark MICHELIN No. 005670872, registered on February 15, 2008 and covering goods in classes 3, 4, 7, 9, 11, 12, 20, 28.
The Complainant is present in 170 countries, has 111,700 employees and operates 68 production facilities in 17 countries which together produced 187 million tires in 2016. The Complainant has been active in the United Kingdom, where the Respondent is domiciled, since 1905.
The Respondent registered the Domain name on 8 April 2017, which does not resolve to an active website. On May 11, 2017, the Complainant sent a cease-and-desist letter to the Respondent via registered mail and email requesting the Respondent to transfer the Domain name to the Complainant free of charge.
The Respondent did not reply to the letter and the postal version was returned undelivered and marked as "not called for". The Complainant and its MICHELIN trademarks enjoy a worldwide reputation.
5. Parties' Contentions
According to the Complainant, the Domain name is confusingly similar to the Trade marks, as it reproduces the Trade marks in their entirety. Previous WIPO panels have considered the Trade marks to be "well-known". The addition of the letters "sca" does not dispel the confusing similarity, the Complainant submits, as these may refer to the acronym "SCA" meaning "Société en Commandite par Actions", which corresponds to the legal form of the Complainant. The Complainant further states that the extension ".com" is not to be taken into consideration when examining confusing similarity as it is well established that the generic Top Level Domain is insufficient to avoid a finding of confusing similarity.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain name, since the Respondent is not affiliated with the Complainant in any way and has not been authorised or licensed by the Complainant to use and register its Trade marks or to seek registration of any domain name incorporating the Trade marks. Moreover, the Complainant states, the Respondent is not known by the name "Michelin", nor - to the best of the Complainant's knowledge – has the Respondent used or made any demonstrable preparation to use the Domain name in connection with a bona fide offering of goods or services as the Domain name resolves to a website under construction which may be considered as an inactive page. Consequently, the Complainant concludes that the Respondent fails to show any intention of noncommercial or fair use.
According to the Complainant the Domain name has been registered and is being used in bad faith. The Complainant is of the view that it is implausible that the Respondent was unaware of the Trade marks and the Complainant's activities when he registered the Domain name, since both the Complainant and its Trade marks are well-known throughout the world, including the United Kingdom, the domicile of the Respondent. Moreover, the Complainant points out, a quick MICHELIN trade mark search and/or a search via Google or any other search engine using the keyword "MICHELIN" would have revealed to the Respondent the existence of the Complainant and its Trade marks. As further evidence of bad faith registration and use, the Complainant emphasises the lack of a response to the cease-and-desist letter and submits that the Respondent appears to be a cyber-squatter as he is associated with more than 190,000 domain names, replicating trademarks like VOLVO, SANOFI, LAFARGE, FACEBOOK, MESSENGER, PAYPAL and NOVOSTAR.
The fact that the Domain name resolves to a website under construction does not preclude a finding of bad faith, the Complainant states, and requires all relevant circumstances to be considered. In addition, the Complainant states, reproducing a famous trademark in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade marks. The Domain name is confusingly similar to the Trade marks as it incorporates the marks in their entirety. The addition of the acronym "SCA" does not avoid this confusing similarity as it is the standard abbreviation of the Complainant's legal form of "Société en Commandite par Actions". The generic Top-Level Domain ("gTLD") ".com" is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel views on selected UDRP Questions, Third Edition WIPO Overview 3.0 ("WIPO Overview 3.0"), section 1.2).
Therefore, the Panel finds that the Domain name is confusingly similar to the Trade marks in which the Complainants have rights.
B. Rights or Legitimate Interests
The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain name (WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant's consent to use the Trade marks as part of the Domain name, is not commonly known by the Domain name and has not acquired trade mark rights in the Domain name. The Respondent's absence of use of the Domain name in connection with an active website means that he cannot claim to make a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain name.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain name.
C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain name the Respondent was or should have been aware of the Trade marks, since:
- the Respondent's registration of the Domain name occurred 16 years after the registration of the earliest Trade marks;
- both the Complainant and its Trade marks are well known throughout many countries, including the United Kingdom, where the Complainant has been active since 1905;
- the MICHELIN trade mark, which is incorporated in its entirety in the Domain name, is not a dictionary word, and does not appear to be a name of which it is likely that a registrant would spontaneously or accidentally think;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain name would have informed the Respondent of the existence of the Trade marks and the Complainant.
Under these circumstances, the Panel concludes that the Domain name has been registered in bad faith.
With regard to bad faith use, the fact that the Domain Name at this stage does not appear to resolve to an active website does not imply a lack of bad faith. As set out in the WIPO Overview 3.0, section 3.2.2, the consensus view is that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see WIPO Overview 3.0, section 3.0 and, inter alia, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka, WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith.
In this case, the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain name:
- the probability that the Respondent was aware or should have been aware of the Complainant's rights in the Trademarks;
- the non-dictionary nature of the mark MICHELIN incorporated in the Domain name, such that the Respondent cannot claim to have "accidentally" registered a domain name that happens to correspond to the Trademarks;
- the lack of a formal Response of the Respondent;
- the lack of a response of the Respondent to the cease-and-desist letter sent by the Complainant in May 2017, while the registered form of the letter was returned as "not called for";
- the reputation of the Trade marks, indicating that the Respondent deliberately targeted the Trademarks in order to benefit from that reputation;
- the registration by the Respondent of more than 190,000 domain names, including well-known trademarks such as VOLVO, SANOFI, LAFARGE, FACEBOOK, MESSENGER, PAYPAL and NOVOSTAR, suggesting that the Respondent is a domain name cybersquatter.
Therefore, the Panel concludes that the 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 <michelinsca.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: September 11, 2017