WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Whois Privacy Protection Service by onamae.com / Katsuya Masaki, Masaki Katsuya
Case No. D2020-2496
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Whois Privacy Protection Service by onamae.com, Japan / Katsuya Masaki, Masaki Katsuya, Japan.
2. The Domain Name and Registrar
The disputed domain name <videomichelin.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On September 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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 September 29, 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 in English on September 30, 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 October 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2020.
On October 27, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On October 29, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center appointed Teruo Kato as the sole panelist in this matter on November 20, 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
According to the Complainant, the Complainant is a leading tire company: “Headquartered in Clermont-Ferrand, France, Michelin is present in 171 countries, including Japan, has 114,000 employees and operates 69 production facilities”.
The Complainant owns, inter alia, International trademark MICHELIN No. 1245891, registered on December 10, 2014, designating multiple jurisdictions, including Japan and covering goods and services in classes 35, 36, 39, 40, 41, 42, 44 and 45; and Japanese trademark MICHELIN No. 5809207, registered on November 27, 2015 and covering goods in classes 8, 11, 16, 20, 21, 24 and 26.
Additionally, the Complainant is the owner of domain names, amongst others, <michelin.com> registered on December 1, 1993 and <michelin.jp> registered on March 26, 2001.
The disputed domain name <videomichelin.com> was registered on April 29, 2020.
The Respondent is Katsuya Masaki, Masaki Katsuya whose address is given as being in Japan. The disputed domain name was registered using a privacy service.
According to the Complainant and relevant evidence, the website at the disputed domain name “points to an inactive page” and “[p]reviously, the said domain name was resolving to the website named "VIDEO MICHELIN" in Japanese, with different links related to the analysis of different films and videos”.
The Complainant requests that the disputed domain name be transferred to the Complainant.
5. Parties’ Contentions
The Complainant contends that it is the owner of various trademarks including MICHELIN.
The Complainant also contends that the disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark and that the generic and descriptive term “video” should be disregarded in considering the confusing similarity.
The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark MICHELIN, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide use or trade under the disputed domain name.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issues:
Language of the Proceeding
The Complainant has filed the Complaint and amended Complaint in English for the disputed domain name, in which it contended that “[a]s the language of the registration agreement in English, the administrative proceeding will be in English” and submitted a copy of “the registration agreement” to support its contention. However, the reply from the Registrar to the Center dated September 29, 2020 confirmed that the language of the registration agreement is Japanese.
In the email dated October 27, 2020, the Center advised the parties, in both Japanese and English, that the language of the registration agreement is Japanese.
In its response, the Complainant stated in its email dated October 29, 2020 that “[k]indly note that the Complainant has already submitted, in the Complaint, a request for English to be the language of the proceedings and has nothing further to add to it.”
Paragraph 11(a) of the Rules provides that unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In the present case, the Panel is of a view that the indication by the Complainant of its desire to use English, whilst not using the term “request” in the Complaint or in the amended Complaint, may nevertheless be interpreted by the Panel as meaning a request to use English in lieu of Japanese, and holds that, in effect, the request has been made by the Complainant.
In the present case, the Respondent was invited by the Center, in both Japanese and English, to indicate any objection to the proceeding being conducted in English by November 1, 2020. The Respondent did not respond by this deadline nor later. The Panel would have accepted a Response from the Respondent in Japanese, but none was filed.
The Complainant submitted certain materials, purporting to be the contents of the webpage resolved at the disputed domain name as of June 1, 2020, in which a significant portion of them are written in English language. The Respondent had an opportunity to raise an objection to this evidence but did not do so. Accordingly, the Panel forms a view that the Respondent is probably familiar with the English language and would not be subjected to undue disadvantages, should the proceedings be conducted in the English language.
In view of the circumstances of this case as above, and in accordance with paragraph 11(a) of the Rules, the Panel decides that English be the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of MICHELIN registered trademarks, including inter alia:
- International trademark MICHELIN No. 1245891, registered on December 10, 2014, designating multiple jurisdictions, including Japan and covering goods and services in classes 35, 36, 39, 40, 41, 42, 44 and 45; and
- Japanese trademark MICHELIN No. 5809207, registered on November 27, 2015 and covering goods in classes 8, 11, 16, 20, 21, 24 and 26.
As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘info’, ‘.com’, ‘.club’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the generic Top-Level Domain (“gTLD”), the disputed domain name consists of the Complainant’s trademark MICHELIN and the term “video”.
It is well established that, where a disputed domain name incorporates, as here, the entirety of a complainant’s trademark, the addition of common terms does not prevent a finding of confusing similarity. (See Salvatore Ferragamo S.p.A v. Ying Chou, WIPO Case No. D2013-2034; Salvatore Ferragamo S.p.A. v. Haonan Hong, WIPO Case No. D2013-2040; Salvatore Ferragamo S.p.A. v. Brian E. Nielsen, WIPO Case No. D2014-1123; Salvatore Ferragamo S.p.A. v. Wei Huan, WIPO Case No. D2014-1290); and Yamaha Motor Corporation, U.S.A. v. Domain Admin, Hush Whois Protection Ltd., WIPO Case No. D2018-1359).
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to 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, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name wholly incorporating the Complainant’s trademark, the Panel finds that such use is not bona fide within the meaning of the Policy.
By not submitting a response, the Respondent has failed to overturn such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following:
(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 the respondent’s website or location or of a product or service on that website or location.
The Panel notes and accepts that the trademark MICHELIN was registered and extensively used internationally, including in Japan, long before the disputed domain name was registered on April 29, 2020. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name.
As to the use in bad faith, the Complainant submitted a material indicating that, as of June 1, 2020, the disputed domain name resolved to a website named "Video Michelin" in Japanese, with different links related to the analysis of different films and videos. The Panel notes that the said material includes a passage in English language that “ABOUT US […] Hello! I’m the maintainer of this site. I love dramas and more, so I enjoy registering to multiple VODs everyday! On this site, my subjectivity is used to grade dramas, movies and animations in a Michelin system and introduce them in details! (emphasis added)”. The Panel notes that the dramas and movies so introduced in the quoted webpages are ranked from one to three stars, in a manner and style similar to those of used in the Michelin restaurant guides.
The Panel also notes that the Respondent did not raise any comment on the genuineness of the said material submitted by the Complainant. Under the circumstances, the Panel holds that it is most likely that the material submitted correctly shows the disputed domain name’s resolution as of June 1, 2020. The Panel considers such use to amount to bad faith use of the disputed domain name.
The Complainant further contends that the disputed domain name currently “points to an inactive page”. This status was verified by the Panel as of November 18, 2020.
As regards this apparent current non-use, the Panel refers to section 3.3 of WIPO Overview 3.0, which states that “panelist have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.” and, in applying this, “panelists will look at the totality of the circumstances in each case.”
In the present case, the Panel is satisfied that the overall circumstances of the case suggest that the Respondent’s current non-use is in bad faith.
Such circumstances include, among others, the strength and renown of the Complainant’s MICHELIN trademark, the Respondent’s failure to take part in the present proceedings, which offered the Respondent an opportunity to respond to, among others, the material showing the contents of the webpage as of June 1, 2020, as well as the apparent concealment of the Respondent’s identity and contact details by use of a privacy service until the same were disclosed by the Registrar on September 29, 2020. (See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246.) The Panel also takes note that the Complainant had served multiple “cease and desist” emails to the Respondent, to which the Respondent did not reply.
In the circumstances, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. The third requirement of the Policy has been met.
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 <videomichelin.com> be transferred to the Complainant.
Date: December 4, 2020