WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Zeeshan Shafiq, Caramel Tech
Case No. D2018-0374
1. The Parties
Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is WhoisGuard, Inc., WhoisGuard Protected of Panama / Zeeshan Shafiq, Caramel Tech of Lahore, Pakistan.
2. The Domain Names and Registrar
The disputed domain names <michelin.city>, <michelin.life>, <michelin.today>, and <michelin.zone> (the “Disputed Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2018. On February 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 20, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 26, 2018.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 12, 2018. 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
Complainant is a multinational company based in France. Operating since 1889, Complainant manufactures and markets tires for all types of vehicles, including automobiles, trucks, airplanes, farm equipment, and bicycles. Complainant has about 112,300 employees based in 170 countries.
Complainant holds several trademarks for the term MICHELIN, including International Registration No. 348615 (Registered July 24, 1968); European Union Registration No. 004836359 (Registered March 13, 2008); and in Pakistan, where Respondent lists an address of record, Registration No. 57363 (Registered May 27, 1972). These registrations identify tires, as well as other goods and services including those related to travel and guides.
In addition to its trademark registrations, Complainant also owns registrations for domain names incorporating the MICHELIN mark. These include <michelin.com> (registered 1993), and <michelin.fr> (registered 2008). Complainant uses the websites associated with these domain names to offer information to prospective consumers about its products and services.
The Disputed Domain Names appear to have been registered on May 12, 2017. Respondent has no affiliation with Complainant. The Disputed Domain Names each resolve to parked web pages. Complainant has not authorized these activities by Respondent, or any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that (i) the Disputed Domain Names are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Disputed Domain Names; and (iii) Respondent registered and is using the Disputed Domain Names in bad faith.
In particular, Complainant contends that the Disputed Domain Names incorporate its MICHELIN mark, which Complainant claims is both well-known and famous. In this regard, Complainant asserts that Respondent has merely added generic Top-Level Domains (“gTLDs”) that reflect activities consumers would otherwise associate with Complainant’s services.
Complainant further asserts that Respondent has no legitimate rights or interests to the term, but that it is using the Disputed Domain Names in bad faith to attract consumers to its parked web pages, with full knowledge of Complainant’s global renown.
Respondent did not file a reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that they are.
The Disputed Domain Names each incorporate Complainant’s mark, MICHELIN, and add only the gTLDs “.city”, “.life”, “.today”, and “.zone”. In each instance, these gTLDs may be perceived by consumers as an indicator of a place, time, or activity that consumers might otherwise associate with Complainant and Complainant’s services, including those related to travel and other guides, for which Complainant has registered its MICHELIN mark.
Typically a Top-Level Domain name may be ignored for purposes of considering this first element.
See Compagnie Générale des Etablissements Michelin v. Whois Guard Inc., Whois Guard Protected / Saad Zaeem, Caramel Tech Studios, WIPO Case No. D2017-0234. However, in a situation such as this, it may be taken into consideration as actually causing further similarity and confusion. See Calvin Klein Trademark Trust, Calvin Klein, Inc. v. Whois Guard, Inc. / Stayu Kasabov, WIPO Case No. D2015-2306. The panel in that case stated:
“Although it is generally held that the gTLD suffix may be ignored when comparing the contested domain name and the trademark in which the complainant has rights, in this case the nature of the “design” gTLD and the products typically associated with the Complainant’s trademark exacerbates the potential confusing similarity between the Domain Name and the Complainant’s trademarks.”
This Panel similarly finds that the addition of the gTLDs “.city”, “.life”, “.today”, and “.zone”, because they may be perceived by consumers as an indicator of a place, time, or activity that consumers might otherwise associate with Complainant and Complainant’s services, therefore exacerbate the potential confusing similarity between the Disputed Domain Names and Complainant’s mark. Thus, the Panel finds that Complainant has satisfied the first requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent did not submit a reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the Disputed Domain Names. Rather, as mentioned in section 4 of this Panel’s decision, Respondent merely has parked web pages at the Disputed Domain Names.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. As noted in section 4 of this Panel’s decision, Respondent has parked webpages at the URLs associated with the Disputed Domain Names. Even having a passive website does not shield a respondent from a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), paragraph 3.2, consensus view (“With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the 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.”)
Rather, a panel must examine “all of the circumstances” including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his or her identity and/or replies to the complaint. Respondent here did not respond to the Complaint, and took steps to maintain a cloaked identity, wherein only the Registrar had Respondent’s contact details. Meanwhile, prior UDRP panels have found Complainant’s marks to be famous or well-known. See Compagnie Générale des Etablissements Michelin v. Cameron David Jackson, WIPO Case No. D2015-1671 (finding Complainant’s mark “famous”); Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu, WIPO Case No. D2014-1240 (finding Complainant’s mark “well-known”); and Compagnie Générale des Etablissements Michelin v. Milan Kovac / Privacy--Protect.org, WIPO Case No. D2012-0634 (finding Complainant’s mark “well-known or famous throughout the world.”). Finally, as noted above, there was a prior UDRP decision by Complainant against Respondent’s company. See Compagnie Générale des Etablissements Michelin v. Whois Guard Inc., Whois Guard Protected / Saad Zaeem, Caramel Tech Studios, WIPO Case No. D2017-0234 (transferring <michelin.design>).
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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.city>, <michelin.life>, <michelin.today>, and <michelin.zone> be transferred to Complainant.
Dated: April 22, 2018