WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Private by Design, LLC / Yong Sik Choi
Case No. D2020-1280
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Private by Design, LLC, United States of America / Yong Sik Choi, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <michelin.buzz> is registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2020. On May 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2020, 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 May 21, 2020, 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 May 26, 2020.
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 May 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on June 23, 2020. 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 the well-known tire company that started trading under the name “Michelin” in 1889 and now has 114,000 employees in 17 countries. The Complainant also publishes the famous Michelin Guides, which currently rate over 30,000 establishments in 30 countries.
The Complainant owns many trade marks for MICHELIN including International Trademark no. 348615, registered on July 24, 1968, in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20.
The disputed domain name was registered on November 14, 2019.
As of May 15, 2020, the disputed domain name resolved to a Registrar holding page.
The Complainant sent a number of legal communications to the Respondent and the Registrar starting on December 30, 2019, but has received no substantive response.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s trade mark, which it reproduces in its entirety. The descriptive extension “.buzz” is insufficient to avoid confusing similarity.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has not authorised the Respondent to register and use its trade mark in a domain name.
There is no evidence that the Respondent is commonly known by the disputed domain name.
Nor is there any evidence of use of the disputed domain name for a bona fide offering of goods or services or that the Respondent has made demonstrable preparations for such an offering.
Notwithstanding use of the “.buzz” domain name suffix, the Respondent cannot rely on alleged registration of the disputed domain name for legitimate noncommercial free speech because the Respondent has not actually used the disputed domain name for such a purpose and, in any event, the right to legitimate criticism does not extend to registration and use of a domain name that is identical to a trade mark.
The Respondent has engaged in a pattern of registering domain names that include famous registered trade marks.
There is a risk that the disputed domain name is being used for phishing as email servers have been configured at the disputed domain name.
The disputed domain name was registered and used in bad faith.
It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. The disputed domain name has been used to create a likelihood of confusion with the Complainant’s trade mark and/or constitutes a passive holding in bad faith.
The Respondent’s failure to respond to the Complainant’s legal letters is further evidence of bad faith, as is the fact that the Respondent is a well-known serial cyber squatter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the mark MICHELIN by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Disregarding the domain name suffix “.buzz”, the disputed domain name is identical to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, it is appropriate to consider this case in the context of the principles of passive holding.
Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels have found that the non-use of a domain name, including a “coming soon”-page (as here), would not prevent a finding of bad faith under the doctrine of passive holding.
The Panel concludes that the following cumulative circumstances are indicative of passive holding in bad faith:
1. the extent of the distinctiveness and reputation of the Complainant’s mark;
2. the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use; and
3. the fact that the Respondent has been found to have registered and used domain names reflecting other famous brands in bad faith, including <loreal.blog>, <calvinklein.buzz> and <bvlgari.blog>.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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, <michelin.buzz> be transferred to the Complainant.
Date: July 7, 2020