WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. IP Perekrestok Avtomarket
Case No. D2018-0953
1. The Parties
Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is IP Perekrestok Avtomarket of Astana, Kazakhstan.
2. The Domain Name and Registrar
The disputed domain name <michelinkz.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2018. On April 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 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 May 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 29, 2018.
The Center appointed Felipe Claro as the sole panelist in this matter on June 14, 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.
On May 10, 2018, an email was received from what appeared to be a third party M. Shapovalova titled “Legal Expert”, requesting a copy of the Complaint. The Center replied on May 11, 2018 noting that the Complaint was filed against the Respondent IP Perekrestok Avtomarket. Further, requesting the sender of the email identify herself or himself, clarifying her/his relationship (if any) to the Respondent(s), and provide information sufficient to establish the legitimacy of her/his request/submission in the context of the current proceedings. No further communication was received from this third party.
4. Factual Background
Complainant is a leading tire company, dedicated to enhancing its clients’ mobility, sustainably; designing and distributing the most suitable tires, services and solutions for its clients’ needs; providing digital services, maps and guides to help enrich trips and travels and make them unique experiences; and developing high-technology materials that serve the mobility industry.
Headquartered in Clermont-Ferrand, France, Michelin 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 MICHELIN brand was present in the Russian market since the beginning of the twentieth century. The Eastern European Geographic Zone of the Michelin Group are Azerbaijan, Armenia, Belarus, Georgia, Kyrgyzstan, Moldova, the Russian Federation, Tajikistan, Turkmenistan, Uzbekistan and Ukraine, in which it counts more than 1,000 employees.
Previously, the disputed domain name resolved to an inactive page. New it redirects to the default page of the webhost. Further, emails have been configured using the disputed domain name.
5. Parties’ Contentions
Complainant became aware of Respondent’s registration of the domain name <michelinkz.com>, which entirely reproduces its trademark and trade name MICHELIN associated with the International Organisation for Standardization (“ISO”) Code “kz”.
After investigations made by Complainant, it has been revealed that email servers have been configured on the disputed domain name <michelinkz.com>. As such, there might be a risk of phishing.
Before starting the present proceeding, Complainant made some efforts to resolve this matter amicably.
On March 6, 2018, Complainant sent a notification of rights to Respondent via registered letter and email on the basis of its trademark rights. It requested Respondent to transfer the disputed domain name to Complainant free of charge.
Respondent never replied to Complainant’s cease-and-desist letter despite several reminders. As no amicable settlement could be found, Complainant initiated the UDRP procedure against Respondent in order to obtain the transfer of the disputed domain name, which is almost identical to its marks. Also, the disputed domain name was registered and it is being passively used in bad faith, having not legitimate interest in it.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In view of the lack of a response from Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding based on the Complainant’s undisputed representations. In that regard and apart from judging this proceeding through mere default of Respondent, the Panel makes the following specific findings.
A. Identical or Confusingly Similar
Complainant is the owner of the following MICHELIN Trademark Registrations:
• International Trademark MICHELIN no. 348615, registered on July 24, 1968 (duly renewed) and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;
• International Trademark MICHELIN no. 492879, registered on May 10, 1985 (duly renewed), designating Kazakhstan and covering goods in class 12;
• International Trademark MICHELIN no. 816915, registered on August 27, 2003 (duly renewed), designating Kazakhstan and covering services in classes 35, 37, 39 and 42.
In addition, Complainant operates, among others, domain names reflecting its trademarks in order to promote its services:
• <michelin.com> registered on December 1, 1993;
• <michelin.ru> registered on November 20, 1998;
• <michelin.kz> registered on November 11, 2004.
The disputed domain name is identical or at least confusingly similar to Complainant’s trademark MICHELIN. Indeed, the disputed domain name substantially reproduces Complainant’s trademark in its entirety which previous UDRP panels have considered to be “well-known” or “famous” Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu, WIPO Case No. D2014-1240; Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang, WIPO Case No. D2013-1418; Compagnie Générale des Etablissements Michelin v. Milan Kovac/Privacy--Protect.org, WIPO Case No. D2012-0634; Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev, WIPO Case No. D2012-0384; and, Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy, WIPO Case No. D2012-0045; Compagnie Générale des Etablissements Michelin v. Cameron David Jackson, WIPO Case No.D2015-1671; Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios, WIPO Case No. D2017-0234.
In many WIPO UDRP decisions, panels considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to Complainant’s registered trademark (L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059; and The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113.
The disputed domain name <michelinkz.com> is confusingly similar to the MICHELIN trademark in so far that Respondent adds only “kz” as a suffix, which is the two-letter International Organization for Standardization (“ISO”) country code and the two-letter country code Top Level Domain (“ccTLD”) abbreviation corresponding to Kazakhstan. Incorporation of the letters “kz” does not mitigate any possible confusion, rather contributes to the likelihood that consumers will believe that the products offered originate from the Kazakhs-based activities of the Complainant given that the “kz” is the ISO and ccTLD code corresponding to Kazakhstan.
Prior UDRP decisions have held that the incorporation of an ISO or ccTLD code is a nondistinctive
element which does not avoid confusing similarity (LEGO Juris A/S v. pcmaniabg, Paisiy Aleksandrov, WIPO Case No. D2010-1965).
The generic Top-Level Domain (“gTLD”) extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed name (Accor v. Noldc Inc., WIPO Case No. D2005-0016). The mere adjunction of a gTLD such as “.com” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (L’Oréal v Tina Smith, WIPO Case No. D2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).
Accordingly, by registering the disputed domain name, confusingly similar with Complainant’s trademark, it is likely that the domain name could mislead Internet users into thinking that it is, in some way, associated with Complainant.
Complainant has used the trademark MICHELIN in connection with a wide variety of products and services around the world. Consequently, the public has learnt to perceive the goods and services offered under this mark as being those of Complainant. Therefore, the public would reasonably assume that the disputed domain name would be owned by Complainant or at least assume that it is related to Complainant.
For all of the above-mentioned reasons, the disputed domain name in dispute is identical or confusingly similar to the trademark MICHELIN in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Respondent is not affiliated with Complainant in any way nor has been authorized by Complainant to use and register their trademarks, or to seek registration of any domain name incorporating said mark. Furthermore, Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the MICHELIN trademark preceded the registration of the disputed domain name for years.
In previous UDRP decisions, panels found that in the absence of any license or permission from Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
Moreover, the disputed domain name is so identical to the famous MICHELIN trademark of Complainant, that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
Besides, the disputed domain name has never been actively used since its registration. Previously, the disputed domain name resolved to an inactive page. Now, it redirects towards the default page of the webhost, which can be considered as inactive. Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. Consequently, Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. It is most likely to be believed that Respondent has no rights or legitimate interests in the said domain name.
Additionally, Respondent never answered to Complainant’s letter despite Complainant’s reminders. UDRP panels have stated that when Respondents do not avail themselves of their rights to respond to Complainant, it may be further evidence that respondents have no rights or legitimate interests in the disputed domain name (AREVA v. St James Robyn, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
Furthermore, email servers have been configured on the disputed domain name <michelinkz.com> and thus, there might be a risk that Respondent is engaged in a phishing scheme. So, the disputed domain name is not used in any type of legitimate business or services.
For all of the above-cited reasons, it is established that Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Bad faith can be found where respondent “knew or should have known” of Complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interests (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).
Complainant is well-known throughout the world including Kazakhstan– the home country of Respondent. As the composition of the disputed domain name entirely reproduces Complainant’s trademark MICHELIN, it is unlikely that Respondent did not have this trademark and company name in mind while registering the disputed domain name.
In view of the above-mentioned circumstances, there is no doubt concerning Respondent’s knowledge of the existence of Complainant, its trademark and activities at the time of the registration of the disputed domain name <michelinkz.com>. Therefore, Respondent has registered the disputed domain name in bad faith.
Bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark may suggest opportunistic bad faith (LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091; Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226; Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam), WIPO Case No. D2006-0464). Given the reputation of the MICHELIN trademark, registration in bad faith can be inferred.
Under paragraph 2 of the Policy, it is established that when someone registers a domain name, he/she represents and warrants to the registrar that, to his/her knowledge, the registration of the domain name will not infringe the rights of any third party. Which means that it was Respondent’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain name (Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART, WIPO Case No. D2009-0901; Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397).
A quick MICHELIN trademark search would have revealed to Respondent the existence of Complainant and its trademark. Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226).
Supposing that Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple search via Google or any other search engine using the keyword “michelin” demonstrates that all first results relate to Complainant’s products or news.
In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of Complainant and its trademarks, as well as the high level of notoriety of Complainant, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademarks at the time of registration of the disputed domain name.
In light of the reputation of Complainant’s MICHELIN trademark, it is implausible that Respondent was unaware that Complainant owns trademark rights in the MICHELIN trademark. Previous UDRP panels have established that knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration (Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287; NBC Universal Inc. v. Szk.com, WIPO Case No. D2007-0077).
Also, as indicated in another UDRP decision, “it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products” (Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325). However, Respondent neither tried to defend its rights nor stated any valid arguments to justify the registration of the domain name in response to Complainant’s cease-and-desist letter.
Previous UDRP Panels have considered that in the absence of any license or permission from Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (, Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281; Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055).
As the disputed domain name is confusingly similar to Complainant’s trademark, previous UDRP panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site” (MasterCard International Incorporated (“MasterCard”) v. Wavepass AS, WIPO Case No. D2012-1765; Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095).
The disputed domain name <michelinkz.com> is currently inactive. This state of inactivity does not mean that the disputed domain name is used in good faith. Indeed, passive holding does not preclude a finding of bad faith: “A principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose” (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421).
Previous UDRP panels have considered that passive holding of a domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, and that in such cases the panel must give close attention to all the circumstances of Respondent’s behavior (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In Telstra Corporation Limited v. Nuclear Marshmallows, supra the panel concluded that Respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by Respondent because: (1) Complainant’s trademark had a strong reputation and was widely known; (2) Respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) Respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) Respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.
Similarly, reproducing famous trademarks 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.
Moreover, it is likely that Respondent registered the domain name to prevent Complainant from using its trademark in the disputed domain name. According to former panel, this type of conduct constitutes evidence of Respondent’s bad faith registration and use (L’oreal v. Chenxiansheng, WIPO Case No. D2009-0242).
Finally, email servers have been configured on the disputed domain name and thus, there might be a risk that Respondent is engaged in a phishing scheme.
Therefore, the use of an email address with the disputed domain name presents a significant risk where Respondent could aim at stealing valuable information such as credit cards from Complainant’s clients or employees. Such risk has been recognized by prior panel in Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225).
All aforementioned circumstances confirm that the disputed domain name is used in bad faith.
Consequently, it is established that the Respondent both registered and is using 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 name, <michelinkz.com> be transferred to the Complainant.
Date: June 28, 2018