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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Contact Privacy Inc. Customer 0150017794 / Milen Radumilo

Case No. D2018-1539

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 0150017794 of Toronto, Canada / Milen Radumilo of Bucharest, Romania.

2. The Domain Name and Registrar

The disputed domain name <viamicheling.com> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2018. On July 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 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 July 17, 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 July 20, 2018

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 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 13, 2018.

The Center appointed Rodrigo Azevedo 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 French tire manufacturer, also notable for its roadmaps, travel and restaurant guides.

The Complainant is one of the leading companies in the tire market and operates production facilities in numerous countries.

In 2001, the Complainant's subsidiary company ViaMichelin was founded, aiming to design, develop and market digital travel assistance products and services for road users.

The MICHELIN trademark is registered by the Complainant in multiple jurisdictions throughout the world, including the International trademarks nos. 348615 (registered on July 24, 1968), 816915 (registered on August 27, 2003) and 771031 (registered on June 11, 2001), as well as the European Union trademark no. 013558366 (registered on April 17, 2015).

The Complainant also owns and operates several domain names incorporating its MICHELIN mark, such as <michelin.com> and <viamichelin.com>, registered respectively in 1993 and 2000.

The disputed domain name was registered by the Respondent on November 30, 2017. According to the evidence provided by the Complainant, the disputed domain name resolved to a website with pay-per-click ("PPC") links.

The Panel accessed the disputed domain name on August 20, 2018, which resolved to an inactive page.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

The disputed domain name is confusingly similar to the Complainant's trademark MICHELIN and trade name ViaMichelin. Indeed, the disputed domain name imitates the Complainant's trademark MICHELIN, which previous UDRP panels have considered to be well-known or famous. The disputed domain name reproduces the Complainant's well-known and famous trademark MICHELIN, combining with the word "via", together forming the Complainant's well-known tradename ViaMichelin and the adjunction of the letter "g" at the end. This added letter does not significantly affect the appearance or pronunciation of the disputed domain name. This practice is commonly referred to as "typosquatting" and creates virtually identical and/or confusingly similar marks to the Complainant's trademark. The extension ".com" is not to be taken into consideration when examining the identity or similarity between the Complainant's trademarks and the disputed domain name. By registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant's trademark. The Complainant has used the trademark MICHELIN in connection with a wide variety of products and services around the world. Consequently, the public has learned to perceive the goods and services offered under this mark as being those of the Complainant. Therefore, the public would reasonably assume that the disputed domain name would be owned by the Complainant or its subsidiary ViaMichelin, or at least assume that it is related to the Complainant.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. The 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. UDRP panels found that in the absence of any license or permission from the Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. Moreover, the disputed domain name is so identical to the famous MICHELIN trademark and ViaMichelin trade name of the Complainant, that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. In addition, the disputed domain name redirected to a service that redirects itself to random websites, including commercial websites or fake surveys. Such a redirection cannot be considered as legitimate. The Respondent seeks to take advantage of Internet users by registering the disputed domain name. Additionally, the Respondent never answered to the Complainant's letter despite the Complainant's reminders. UDRP panels have repeatedly stated that when the Respondents do not avail themselves of their rights to respond to the Complainant, it can be assumed that the Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Respondent Milen Radumilo has been subjected to various UDRP disputes where the panels found his lack of rights and legitimate interests in the domain names he registered.

The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. Firstly, the Complainant is well-known throughout the world. Indeed, several UDRP panels have previously mentioned its worldwide reputation, making it unlikely that the Respondent was not aware of the Complainant's proprietary rights in the trademark. In light of the reputation of the Complainant's MICHELIN trademark, the Respondent's imitation of the trademark MICHELIN together imitating the Complainant's well-known service ViaMichelin, clearly proves that the Respondent was aware of the existence of the Complainant's trademark. Furthermore, the addition of the letter "g" at the end constitutes an act of "typosquatting". This latter has already been recognized as evidence of bad faith registration per se by previous UDRP panels. Finally, in view of the circumstances, the use of a privacy service by registrant should be regarded as an additional element indicating bad faith at the time registrant acquired the disputed domain name. Indeed, the Respondent Milen Radumilo has been involved in various UDRP disputes where the panels found that he has registered and used domain names in bad faith. Previous UDRP panels have held that respondents involved in cybersquatting behavior and who made multiple registrations are registrations made in bad faith. Consequently, in view of the above-mentioned circumstances, it is established that Respondent registered the disputed domain name in bad faith. Some elements may be put forward to support the finding that the Respondent also uses the domain name in bad faith. There is bad faith use of a domain name under the UDRP when someone is using a domain name which is confusingly similar to a third-party trademark in order to divert web traffic for commercial gains using the goodwill built up by the owner of the trademark or service mark. The Respondent uses the disputed domain name to link Internet users to a redirection service which is likely to generate revenues. The use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the policy. Finally, the absence of any response to the Complainant's cease-and-desist letters and reminders has already been considered as an inference of bad faith by previous panels.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(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 Panel has no doubt that MICHELIN is a trademark directly connected with the Complainant's tires and guides.

Annex 6 to the Complaint shows several registrations of MICHELIN trademarks obtained by the Complainant, including in the European Union, since 1968.

The disputed domain name incorporates the trademark MICHELIN and consists of a misspelling version of the MICHELIN trademark, basically including a letter "g" at the end, and the term "via". This practice is commonly called "typosquatting", a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors made by Internet users seeking the complainant's website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201).

The disputed domain name also contains the generic Top-Level Domain ("gTLD") suffix ".com". It is well established that a gTLD suffix such as ".com" is typically irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.

The Panel notes that in the circumstances of the case, the use of the disputed domain name that resolves to a website with PPC links related to hotels, travel and driving is not a case that can arise rights or legitimate interests for the Respondent.

Considering that there is no current active webpage linked to the disputed domain name and no response was provided to the present Complaint, nor to the Complainant's cease-and-desist letter, the Panel finds that there is no evidence to demonstrate the Respondent's intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

The disputed domain name encompasses a misspelling version of the trademark MICHELIN and of the Complainant's subsidiary corporate name "ViaMichelin".

When the disputed domain name was registered by the Respondent (in 2017) the trademark MICHELIN was already registered and widely used in connection to the Complainant's well-known tires and travel/restaurant guides.

Therefore, the Panel concludes that it is very unlikely that the Respondent was not aware of the Complainant's trademark or that the adoption of the expression "viamicheling" was a mere coincidence.

The Panel notes that the disputed domain name resolved to a website with pay-per-click links related to travel and driving, such use is a use in bad faith in the circumstances of this case.

In addition, the Panel notes that currently there is no active website linked to the disputed domain name, but this is not enough to avoid the Panel's findings that the disputed domain name is also being used in bad faith.

In the Panel's view, the circumstances that the Respondent (a) adopted a well-known trademark to compose the disputed domain name; (b) has not used the disputed domain name except for a pay-per-click website; and (c) has not provided any justification for the registration of such third party trademark, even after receiving a cease and desist letter from the Complainant, certainly cannot be used in benefit of the Respondent in the present case.

Such circumstances, associated with (d) the lack of any plausible interpretation for the legitimate adoption of the term "viamicheling" by the Respondent are enough in this Panel's view to characterize bad faith registration and use in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.

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 <viamicheling.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: August 30, 2018

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