WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michelin Recherche Et Technique S.A v. Milen Radumilo, White & Case
Case No. D2018-1527
1. The Parties
The Complainant is Michelin Recherche Et Technique S.A of Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Milen Radumilo, White & Case of Bucharest, Romania.
2. The Domain Name and Registrar
The disputed domain name <tigar.info> is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 9, 2018. On July 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2018, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and providing the contact details;
(c) the registration agreement is in English;
(d) the disputed domain name was first registered in the Respondent's name on November 1, 2017.
On July 12, 2018, the Center sent a communication to the Complainant requesting clarification. On the same day, the Complainant submitted an amended Complaint to the Center.
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 Respondent of the Complaint, and the proceedings commenced on July 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 6, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 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
The Complainant is a member of the Michelin worldwide group of companies which, amongst other things, manufactures automobile tyres, rubber products and chemical products.
The group employs more than 100,000 people and has 68 production facilities in 17 countries. In total, the group produced more than 187 million tyres in 2016.
Another member of the group, Michelin Zalau Anvelope owns tyre production facilities in Romania. It has been operating there for some 40 years. In May 2017, it announced a EUR 33 million investment to upgrade the production facility in Zalau. That plant produces some 130 tyre models for distribution in Europe, Africa, Asia and America.
One of the tyre "brands" manufactured at the plant (and the subject of the plant upgrade) is the "Tigar" brand. The Complainant owns two registered trademarks:
- International Registration No. 675773A for TIGAR and device for tyres and air tubes for vehicles in International Class 12. This trademark was registered on May 20, 1997. Romania is one of the many countries designated under the Madrid Protocol.
- International Registration No. 1182229 for TIGAR and device for tyre products in International Class 12. This trademark was registered on October 24, 2013. Romania is also one of the many countries designated under the Madrid Protocol.
As already noted, the disputed domain name was first registered in the Respondent's name on November 1, 2017. According to the Complainant it resolves to a parking page with pay-per-click (PPC) links competitive with the Complainant's products. The parking page also listed prominently an invitation to "buy this domain". According to the Complainant, the disputed domain name was listed on the Afternic platform for USD 688.
At the time this decision is being prepared, the disputed domain name resolves to a website which offers the user the opportunity to win USD 2,000 or an iPhone X or a Samsung Galaxy 9 or an Apple Macbook by answering four questions. After answering the questions, the user is then invited to submit a number of personal details.
5. Discussion and Findings
No response has been filed. The Notification of the Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for "Tigar" and device referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain ("gTLD") component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), sections 1.7 and 1.11. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant's trademark by the addition of the gTLD ".info" and the omission of the device elements in the Complainant's trademark. As the design elements are not capable of representation in domain names, they are generally disregarded for the purposes of the comparison under this limb of the Policy at least where, as here, the design elements are not so dominant as to overbear the textual elements: WIPO Overview 3.0, section 1.10.
Disregarding the ".info" gTLD, the disputed domain name effectively consists of the textual element of the Complainant's trademark, the word "Tigar". Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with or confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that the Respondent is not affiliated with it in any way and it has not authorised the Respondent to use the Complainant's trademark or register it in the disputed domain name. The disputed domain name is plainly not derived from the Respondent's name. In addition, the Complainant's registered trademarks pre-date the registration of the disputed domain name by many years.
To the extent that the disputed domain name has been used as a parking page with PPC links to products competitive with the Complainant's products, that does not qualify as a good faith offering of goods and services under the Policy. Moreover, the website which the disputed domain name redirects to when this decision is being prepared bears all the hallmarks of a site which harvests email addresses and other personal information as it seems most unlikely that anyone would provide USD 2,000 or the expensive electronic products on offer in return for answering four simple questions about which browser is being used.
Accordingly, the Panel finds that the Complainant has established a clear prima facie case that the Respondent does not have rights or a legitimate interest in the disputed domain name.
The Respondent has not sought to rebut the Complainant's allegations or otherwise justify his or its registration of the disputed domain name.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The length and extent of the Complainant's use of its trademark and what appears to be its extensive investment in the "Tigar" brand, including in Romania, provide a basis for inferring that the Respondent knew of the Complainant and its trademark when registering the disputed domain name and did so to take advantage of the trademark significance of the disputed domain name. As already noted, that was done without permission or other justifying right or legitimate interest. The listing of the disputed domain name for sale for USD 688 is further evidence of use in bad faith.
The Respondent has not denied the Complainant's allegations in that respect.
Accordingly, on the record in this administrative proceeding, the Panel finds the Complainant has established that the disputed domain name has been registered and used in bad faith under 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 <tigar.info> be transferred to the Complainant.
Warwick A. Rothnie
Date: August 29, 2018