WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Whois Privacy Protection Service by onamae.com / Masatoshi Yamamoto, Gran Net Co., Ltd
Case No. D2018-0599
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France (the “Complainant” or “Michelin”), represented by Dreyfus & associés, France.
The Respondents are Whois Privacy Protection Service by onamae.com of Tokyo, Japan (the “Respondent Whois”) and Masatoshi Yamamoto, Gran Net Co., Ltd. of Kobe, Hyogo, Japan (the “Respondent Gran Net”) (the Respondent Whois and the Respondent Gran Net are collectively referred to as the “Respondents”).
2. The Domain Name and Registrar
The disputed domain name <a-club-michelin.com> (the “Disputed Domain Name”) is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2018. On March 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 27, 2018.
On March 23, 2018, the Center sent an email in English and Japanese regarding the language of the proceeding to the Parties. The Complainant requested that English be the language of the proceeding on March 26, 2018. The Respondents did not comment on the Language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on April 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 25, 2018.
The Center appointed Haig Oghigian as the sole panelist in this matter on May 16, 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
As there is no submission from the Respondents, the below facts are taken from the Complaint and generally accepted as true.
The Complainant is headquartered in Clermont-Ferrand, France. It also has operations in Japan where it has operated for more than 50 years. The Complainant is the owner of the trademark MICHELIN (the “Mark”) in connection to the automobile and tire manufacturing industries and publication of hotel/restaurant guides and maps. In particular, the Complainant owns the following trademark registrations:
- International Trademark Registration No. 348615 for MICHELIN (registered on July 24, 1968) covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17, and 20;
- Japanese Trademark Registration No. 0970990 for MICHELIN (registered on July 10, 1972) covering goods in class 12; and
- Japanese Trademark Registration No. 5267469 for MICHELIN (registered on September 18, 2009) covering good in classes 1 and 21.
The Complainant and its affiliate operate the following domain names that incorporate the Mark to promote its goods and services:
- <michelin.com> (registered on December 1, 1993); and
- <michelin.fr> (registered on July 21, 2008).
The Respondents are both located in Japan. The current registrant of the Disputed Domain Name is Respondent Gran Net.
The Disputed Domain Name is <a-club-michelin.com>, registered on December 5, 2017. The Disputed Domain Name does not resolve to an active page.
5. Parties’ Contentions
The Complaint seeks transfer of the Disputed Domain Name to the Complainant.
i. The Disputed Domain Name is identical or confusingly similar to the Mark.
The Complainant is the owner of the Mark registered in numerous locations in the world, including in Japan where the Respondents are located. Additionally, the Complainant and its affiliate operate domain names that incorporate the Mark to promote its goods and services.
The Disputed Domain Name is identical or at least confusingly similar to the Complainant’s Mark. The Disputed Domain Name substantially reproduces Complainant’s Mark in its entirety. The Disputed Domain Name reproduces the Mark with the addition of generic terms “a” and “club.” The generic Top-Level Domain (“gTLD”) extension “.com” is irrelevant when comparing the Disputed Domain Name and the Mark.
ii. The Respondents have no right rights or legitimate interest in respect to the Disputed Domain Name.
The Respondents registered the Disputed Domain Name years after the Complainant obtained rights in the Mark. The Respondents have no affiliation with the Complainant nor do they have authority to use the Mark, and they have no prior rights or legitimate interest in the Disputed Domain Name.
The Disputed Domain Name resolve to an inactive page and the Respondents have not provided any evidence of reasonable and demonstrable preparations to use the Disputed Domain Name.
The Respondent Whois answered the Complainant’s demand letter by refusing to disclose the identity of the current registrant, i.e., Respondent Gran Net.
The Respondent Gran Net appears to be a cyber-squatter associated with several domain names replicating other trademarks. The Respondent Gran Net has been involved in prior UDRP procedures. See Associazione radio Maria v. Masatoshi Yamamoto, Gran Net. Co. Ltd., WIPO Case No. D2015-0386; Statoil ASA v. Masatoshi Yamamoto, Gran Net Co., Ltd, WIPO Case No. D2017-1704.
iii. The Disputed Domain Name was registered and being used in bad faith.
The Complainant is a globally well-known company, including in Japan, where the Respondents are located, and it is unlikely that Respondents were unaware of the Complainant’s proprietary rights in the Mark. Given the reputation of the Mark, Respondents’ registration in bad faith can be inferred. Moreover, a simple Internet search using the Mark shows that all first results relate to Complainant’s products or news.
The Respondents did not respond to Complainant’s cease-and-desist letters sent via email, nor defend itself or provide justification for its registration of the Disputed Domain Name.
The Respondent Gran Net appears to be a cyber-squatter and associated with several domain names replicating trademarks and it has been the subject of numerous UDRP procedures where panels have recognized it as a cyber-squatter registering domain names in bad faith.
The Disputed Domain Name resolves to an inactive webpage. However, the Complainant alleges that the Respondents likely registered the Disputed Domain Name to prevent the Complainant from using it.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 11(a) of the Rules gives the Panel discretion to decide the language of this proceeding:
(a) Unless 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 Complainant requested the proceedings to proceed in English. The Respondents did not object to this request. The Panel notes that the Respondents had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but they did not provide any response in this regard.
Additionally, when the Complainant contacted the Respondent Whois before submitting its Complaint to the Center, it responded entirely in English. Accordingly, at least the Respondent Whois appears to be familiar with the English language.
The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Japanese.
Accordingly, having taken into consideration and giving regard to the circumstances of the administrative proceeding, the Panel hereby finds that the proceedings shall continue in English.
6.2 Substantive Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following elements:
(i) The Respondents’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the domain name; and
(iii) The Respondents’ domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Disputed Domain Name is made up of the Complainant’s registered and distinctive Mark MICHELIN with the addition of the generic words “a” and “club,” and the generic Top-Level Domain (“gTLD”) “.com.” The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered Mark MICHELIN.
Accordingly, the first part of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Respondents have not responded to the Complainant to assert any rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides in pertinent part:
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Name, which the Respondents have not rebutted. The Respondents have not sought to assert any rights or legitimate interests in the Disputed Domain Name. Moreover, the Panel finds that none of the circumstances in the paragraph 4(c) of the Policy have been demonstrated by the Respondents nor are present in this case. The Panel thus finds the Respondents do not have rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that the second part of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
UDPR panels have consistently found that mere registration of a domain name that is identical of confusingly similar (particularly domain names comprising or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Here the Complainant has sufficiently established that it is the owner of the globally well-known trademark MICHELIN and that the Respondents have no authority to use the Mark. The Panel accordingly finds that the Respondents registered the Disputed Domain Name in bad faith.
Moreover, the Complainant is the holder of the trademark MICHELIN, registered in 1968, and of the domain name <michelin.com>, registered in 1993. The Respondents could reasonably be expected to have conducted a diligent search and inquiry before registering the Disputed Domain Name to ensure that “the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” Policy, paragraph 2(b). The Respondents have not provided any evidence of such search nor of any genuine use of the Disputed Domain Name or of the intention to do so. The Panel accordingly finds that the Respondents’ use of the Disputed Domain Name is in bad faith.
Accordingly, the Panel finds that the third part of the paragraph 4(a) of the Policy is therefore 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 Name <a-club-michelin.com> be transferred to the Complainant.
Date: May 30, 2018