WPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. WhoisGuard Inc. / Chen Jie
Case No. D2019-1683
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard Inc., Panama / Chen Jie, China.
2. The Domain Name and Registrar
The disputed domain name <michelintokyo.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2019. On July 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2019, 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 23, 2019, 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 26, 2019.
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 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on August 26, 2019. 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 tyre manufacturing company with headquarters in Clermont-Ferrand, France. The Complainant also publishes travel guides, hotel and restaurant guides, maps, and road atlases.
The Complainant, who is present in more than 170 countries, has been using the MICHELIN trademark throughout the world for more than a century.
The Complainant owns numerous trademark registrations for MICHELIN including for example the European Union trademark MICHELIN No. 4836359, registered on March 13, 2008, covering goods and services in classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34, and 39, and the Chinese trademark MICHELIN No. 136402, registered on April 5, 1980, covering goods in class 12.
In addition, the Complainant owns several domain names that reflect its trademarks, including <michelin.com> and <michelin.cn>.
The disputed domain name was registered on June 14, 2018. At the time of the filing of the dispute, the disputed domain name resolved to an inactive webpage.
5. Parties’ Contentions
The Complainant’s assertions may be summarized as follows:
(i) Identical or confusingly similar
The Complainant states that the disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark, since it contains the marks in its entirety with the addition of the geographical term “tokyo”.
(ii) Rights or legitimate interests
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant thus states that the Respondent is not affiliated with the Complainant nor has it been authorized to seek registration of any domain name incorporating the MICHELIN trademark and that the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. The disputed domain name was used for a parked website with pay-per-click (“PPC”) links related to the Complainant’s business, until it was inactivated after the Complainant’s cease-and-desist letter to the Registrar.
(iii) Registration and use in bad faith
According to the Complainant, the disputed domain name was registered and is being used in bad faith.
The Complainant is well known throughout the world making it unlikely that the Respondent was unaware of the Complainant’s proprietary rights in the trademark, when the Respondent registered the disputed domain name.
The Complainant further argues that the initial use of the disputed domain name in connection with a parking page displaying PPC links and the Respondent’s subsequent offer to sell the disputed domain name to the Complainant, albeit without setting a price, falls within paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions in these proceedings. However, the Panel notes that the Respondent replied to the Complainant’s cease-and-desist letter, asserting that he had rights in the disputed domain name and asking how much the Complainant would like to pay for the disputed domain name.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that under the Policy, the disputed domain name <michelintokyo.com> is confusingly similar to the Complainant’s registered trademark MICHELIN because it contains the mark in its entirety. The addition of the geographical term “tokyo” does not dispel a finding of confusing similarity in the present case. The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy, that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings. Moreover, the Panel finds that the composition of the disputed domain name effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, including the evidence on record of the use of the Complainant’s trademark MICHELIN, and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name, which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The Respondent had used the disputed domain name actively for a parking page that contained commercial links related to the Complainant´s activity until the disputed domain name was inactivated. Further, in the email correspondence between the Complainant and the Respondent, the Respondent stated that “I have bought the domain and I am sure I have the rights to keep or sell it to anyone” and “May I know how much you willing to pay for these domains”. Under these circumstances, it is obvious to the Panel that the Respondent´s intent in registering the disputed domain name is in fact to profit in some fashion from or otherwise exploit the Complainant’s trademarks. See section 3.1.1 of the WIPO Overview 3.0.
Noting that the disputed domain name incorporates the Complainant’s distinctive trademark MICHELIN together with the geographical term “tokyo” and the gTLD “.com”, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel finds that the disputed domain name has been registered and used in bad faith, and the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <michelintokyo.com> be transferred to the Complainant.
Date: September 9, 2019