WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Privacydotlink Customer 3442257 / Megha Kansara
Case No. D2019-1749
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Privacydotlink Customer 3442257, Cayman Islands / Megha Kansara, Canada.
2. The Domain Name and Registrar
The disputed domain name <michelinrankings.com> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 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 30, 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 August 1, 2019. The Center received three informal email communications from the Respondent on August 2, 6, and 7, 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 August 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2019. The Center received an informal email communication from the Respondent on August 19, 2019. The Center informed the Parties on September 12, 2019, that it would proceed to panel appointment.
The Center appointed Edoardo Fano as the sole panelist in this matter on September 23, 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.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules, and the Supplemental Rules and without the benefit of a formal response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Compagnie Générale des Etablissements Michelin, a French company operating as a leader in the field of tires as well as publishing the famous Michelin Guide and awarding stars to restaurants all over the world. The Complainant owns several trademark registrations for MICHELIN, among which the following ones:
- International Trademark Registration No. 348615 for MICHELIN, registered on July 24, 1968;
- European Union Trademark Registration No. 013558366 for MICHELIN, registered on April 17, 2015;
- Canadian Trademark Registration No. TMA214191 for MICHELIN, registered on June 11, 1976.
The Complainant operates on the Internet at several websites, the main one being “www.michelin.com”.
The Complainant provided evidence in support of the above.
The disputed domain name <michelinrankings.com> was registered on November 18, 2016, according to the WhoIs records, and when the Complaint was filed the website at the disputed domain name was inactive, although on December 18, 2017 it was resolving to a webpage where the domain names broker “Domain Brothers” was offering the disputed domain name for sale for USD 3,000.
On January 4, 2018 the Complainant sent a cease and desist letter to the Respondent receiving no reply despite several reminders.
5. Parties’ Contentions
The Complainant states that the disputed domain name <michelinrankings.com> is confusingly similar to its trademark MICHELIN, as the word “rankings” is descriptive and not distinctive.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark MICHELIN is distinctive and internationally known. Therefore, the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name and, although it was not actively using the disputed domain name, such passive holding constitutes bad faith considering that the Complainant’s trademark has a strong reputation and is widely known.
The Respondent has made no formal reply to the Complainant’s contentions. However, the Respondent submitted a few email communications that the Panel has assessed, but notes that there were no substantive arguments that would have altered the outcome of this case.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 finds that the Complainant is the owner of the trademark MICHELIN both by registration and acquired reputation and that the disputed domain name <michelinrankings.com> is confusingly similar to the trademark MICHELIN.
As far as the addition of the word “rankings” is concerned, the Panel notes that it is now well established that the addition of dictionary terms or letters to a domain name does not prevent a finding of confusing similarity between the domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the word “rankings” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a formal response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that he has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests he may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] 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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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”.
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark MICHELIN is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, <michelinrankings.com>, especially because the use of the descriptive word “rankings” beside the Complainant’s trademark MICHELIN within the disputed domain name is likely to suggest a connection to the stars awarded by the Michelin Guide.
As regards the use in bad faith of the disputed domain name, pointing to an inactive website, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith use.
Moreover, the disputed domain name was offered for sale for USD 3,000, an amount of money that exceeds the out-of-pocket cost of its registration.
Furthermore, the fact that the Respondent did not reply to the Complainant’s cease and desist letter is an additional indication of the Respondent’s bad faith.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been 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 <michelinrankings.com> be transferred to the Complainant.
Date: September 27, 2019