WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Privacy Administrator, Anonymize, Inc.

Case No. D2020-2031

1. The Parties

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

The Respondent is Privacy Administrator, Anonymize, Inc., United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <jobsmichelinman.com> is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On August 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2020.

The Center appointed Taras Kyslyy as the sole panelist in this matter on September 29, 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 a multinational company that focuses on designing and distributing of tires, services and solutions for its clients’ needs; providing digital services, maps and guides to help enrich trips and travels; and developing high-technology materials that serve the mobility industry. The Complainant is headquartered in Clermont-Ferrand, France, and is present in 171 countries, has 114,000 employees and operates 69 production facilities in 17 countries, including the United States. Bibendum, commonly referred to in English as the Michelin Man or Michelin Tire Man, is the official mascot of the Michelin tire company.

The Complainant owns numerous MICHELIN trademark registrations around the world, including the United States trademark registration No. 1399361, registered on July 1, 1986.

The Complainant operates, among others, the following domain names reflecting its trademark in order to promote its services:

<michelin.com> registered on December 1, 1993;
<michelinman.com> registered on November 6, 2001.

The disputed domain name was registered on November 11, 2019 and resolves to a website containing pay per click links to unaffiliated third-party websites promoting, inter alia, third-party employment services unrelated to the business of the Complainant.

The Complainant sent several cease and desist letters to the Respondent, however no reaction by the Respondent followed.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety with the addition of non-distinctive generic or descriptive terms “man” and “jobs” and the generic Top-Level Domain (“gTLD”) “.com”. The full inclusion of the Complainant’s trademark in combination with the generic terms “jobs” and “man” enhances the false impression that the disputed domain name is somehow officially related to the Complainant, since it refers also to its famous logo, the Michelin Man.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. The Respondent cannot claim prior rights or legitimate interests in the disputed domain name as the Complainant’s trademark precedes the registration of the disputed domain name for years. The Respondent is not commonly known by the disputed domain name or the name MICHELIN. The Respondent cannot assert that, before any notice of this dispute, it was using, or had made 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. Email servers have been configured on the disputed domain name and thus, there might be a risk that the Respondent is engaged in a phishing scheme.

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 it registered the disputed domain name. The Respondent is using the disputed domain name to intentionally attract Internet users to his website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website. Given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name which is confusingly similar to the Complainant’s trademarks, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards the gTLD “.com” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the Complainant’s trademark.

According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that in the present case the addition of descriptive words “man” and “jobs” does not negate confusing similarity.

Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).

According to section 2.9 of the WIPO Overview 3.0 the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. The Panel finds this applies to the present case.

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

At the time of the registration of the disputed domain name the Respondent knew, or at least should have known, about the existence of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United States and internationally. Moreover, it defies logic that incorporating the Complainant’s mark with the terms “man” and “jobs” would be done without reference to and hence knowledge of the Complainant. Thus, the Panel finds that the disputed domain name which is confusingly similar to the Complainant’s trademark was registered in bad faith.

According to paragraph 4(b)(iv) 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: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location. In this case, the disputed domain name confusingly similar to the Complainant’s trademark is used to capitalize on the Internet users’ efforts to find the Complainant and its website and seek employment opportunities with the Complainant. The disputed domain name diverts these consumers to a gateway website that contains content that is wholly unrelated to the Complainant and provides links to unaffiliated third-party websites promoting third-party services. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.

Moreover, the Respondent failed to respond to the Complainant’s cease and desist letters, and did not provide any reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022).

Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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, <jobsmichelinman.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: October 3, 2020