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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Jose Raulzyto Roma Dos Santos, Impulsione Online

Case No. D2017-1678

1. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.

The Respondent is Jose Raulzyto Roma Dos Santos, Impulsione Online of Paraiba, Patos, Brazil.

2. The Domain Name and Registrar

The disputed domain name <michelinpneupoint.com> 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 August 30, 2017. On August 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 September 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 26, 2017.

The Center appointed Charles Gielen as the sole panelist in this matter on October 12, 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 owns several registrations for the trademark MICHELIN. The Complainant refers in particular to Brazilian trademark registration No.840805845, registered on September 27, 2016 for goods in class 12 and No. 800241150, registered on December 12, 1982 for goods in class 16 as well as European Union trademark registration No. 007333834, registered on May 14, 2009 for goods in classes 1, 8, 9, 11, 12, 16, 20, 21 and 28. The Complainant has a registration of, and uses the domain name <michelin.com>.

The disputed domain name <michelinpneupoint.com> was registered on January 4, 2017.

5. Parties' Contentions

A. Complainant

The Complainant uses the trademark MICHELIN in connection with the automobile and tire manufacturing industry as well as in connection with hotel and restaurant guides and publications of maps. According to the Complainant the trademark Michelin has an undisputable reputation in the automotive industry and foreign gastronomy. The Complainant alleges to have marketing operations in more than 170 countries and counted 111 700 employees on December 31, 2015. The Complainant says that it produces over 187 million tires in 68 production facilities in 17 countries in the world, among which in Brazil.

The disputed domain name does not resolve in an active website. Before the Complainant sent a notification to the Respondent, the disputed domain name resolved in a WordPress page entitled "Website coming soon" which was under construction. After having received the notification, the disputed domain name started directing to a holding page. The Complainant sent email messages to the Respondent, who sent one email back only saying that the disputed domain name was not in use. Further attempts by the Complainant to settle the matter in an amicable way remained unsuccessful. The Complainant did not receive any further responses from the Respondent to requests to transfer the disputed domain name.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark MICHELIN because the disputed domain name substantially reproduces this trademark in its entirety. The terms "pneu" and "point", added to the word "michelin" in the disputed domain name, are generic and descriptive terms for certain activities within the business of the Complainant, namely points were tires are being sold. Therefore, the public would reasonably assume that the disputed domain name is owned by the Complainant or at least assume that it is related to the Complainant.

Furthermore, the Complainant argues that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use the trademark MICHELIN, or to seek registration of any domain name incorporating said trademark. Furthermore, the Respondent has no prior rights or legitimate interest in the domain name. The registration of the MICHELIN trademark preceded the registration of the disputed domain name for years. The Respondent failed to show any intention of non-commercial or fair use of the disputed domain name.

Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. In as far as the registration is concerned, it is implausible that the Respondent was unaware of the Complainant and the reputed trade mark MICHELIN when the Respondent registered the disputed domain name. The Respondent knew or should have known of the Complainant's trademark rights and nevertheless registered a domain name in which he had no rights or legitimate interest causing the registration to have been made in bad faith. In this context, the Complainant argues that the trademark MICHELIN is well-known throughout the world as well as that the generic terms "pneu" and "point" in the disputed domain name clearly refer to the business activities of the Complainant. Bad faith use of the disputed domain name can be inferred from the fact that the Respondent adopted a domain name comprising the trademark of the Complainant without having any license or permission to use it. Furthermore the Respondent tries to usurp the identity of the Complainant which is also clear from the use of the email address <michelinpatos@[email]>, which incorporates the trademark MICHELIN associated with the city where the Respondent is established. According to the Complainant, such use demonstrates the intention of the Respondent to abusively benefit from the reputation of the Complainant. Also, according to the Complainant, Internet users could reasonably believe that, in some way, the disputed domain name is linked to the Complainant, either because the Respondent sells the Complainant's products or the Respondent is linked to the Complainant. The fact that the disputed domain name is currently inactive does not mean that the domain name is used in good faith. As previous panels have held, passive holding does not preclude a finding of bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Panel is of the opinion that the Complainant's contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. The Panel gives the following reasons for its decision.

A. Identical or Confusingly Similar

The Complainant proves that it has rights in the trademark MICHELIN. The term "michelin" in the disputed domain name is identical to this trademark. The fact that the disputed domain name contains the terms "pneu" and "point" does not alter the conclusion that the disputed domain name is confusingly similar to the trademark MICHELIN. The reason is twofold. First of all, these terms are descriptive and refer to the Complainant's activities; the term "pneu" stands for "tire" and "point" refers to a point of sale. Secondly the term "michelin" in the disputed domain name is the first word and therefore the dominant element. The added suffix ".com" does not change the finding that the disputed domain name is confusingly similar, since the ".com" is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain ("gTLD") ".com" is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the Complainant's trademark.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant's trademark is not a term one would choose as a domain name without having specific reasons to choose such a term and this term certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark MICHELIN. The Panel is convinced that the term "michelin" in the disputed domain name has no other meaning except to refer to the Complainant and its business, in particular because this term is followed by the descriptive terms "pneu" and "point" that, at least in part, refer to the business of the Complainant. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.

In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.

The Panel agrees with the Complainant that by registering a domain name that incorporates the Complainant's trademark in its entirety, and incorporates terms that at least in part refer to the business of the Complainant, the Respondent has created a domain name that is confusingly similar to the Complainant's trademark and services, by which the Respondent has demonstrated a knowledge of and familiarity with the Complainant's trademark and businesses. The Panel is convinced that it is implausible that the Respondent was unaware of the Complainant and the reputed trade mark MICHELIN when he registered the disputed domain name. The Respondent knew or should have known of the Complainant's trademark rights and nevertheless registered a domain name in which he had no rights or legitimate interest. The Panel is of the opinion that the registration of the disputed domain name has been made in bad faith. The Panel is also of the opinion that the use of the disputed domain name is use in bad faith. As other panels have held, a respondent cannot escape a finding of use in bad faith by holding a disputed domain name in a state of non-use, if the surrounding circumstances indicate that the domain name comprises another's famous trademark without plausible excuse. The Panel finds that this reasoning applies here, where it is clear that the trademark of the Complainant is well-known. Finally, the Respondent did not come forward with any evidence of actual or contemplated bona fide use.

The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.

7. Decision

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 <michelinpneupoint.com> be transferred to the Complainant.

Charles Gielen
Sole Panelist
Date: October 21, 2017

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