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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Privacy service provided by Withheld for Privacy ehf / Osazuwa Etinosa, Jumon Shop Ventures

Case No. D2021-1147

1. The Parties

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

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Osazuwa Etinosa, Jumon Shop Ventures, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <obillomichelin.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 April 14, 2021. On April 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2021, 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 April 15, 2021, 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 April 16, 2021.

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 April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2021.

The Center appointed Steven A. Maier as the sole panelist in this matter on May 17, 2021. 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 company registered in France. It is a worldwide provider of tyres for a variety of automotive applications.

The Complainant is the owner of numerous registrations for the trademark MICHELIN, including for example:

- International trademark number 1245891 for the word mark MICHELIN, registered on December 10, 2014, for goods and services in numerous classes; and

- Nigeria trademark number 18584 for the word mark MICHELIN, registered on April 21, 1967, in International Class 12.

The disputed domain name was registered on March 9, 2020.

The disputed domain name has resolved to a website headed “Obillo Unique Investment Nigeria Limited”. The website includes a prominent banner stating “WELCOME TO OBILLO’S WEBSITE” and features a photograph of a MICHELIN branded tyre service centre, which displays MICHELIN signage in conjunction with the words “HEAD OFFICE” and the wording “OBILLO TYRE SERVICE CENTRE”.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has operated since 1889 and is now the world’s leading tyre business, with a presence in more than 170 countries and 114,000 employees. It submits evidence of its corporate history and commercial profile. It states that, in addition to its large portfolio of MICHELIN trademarks in multiple territories, it has operated a principal website linked to the domain name <michelin.com>, which was registered in 1993.

The Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has rights. It states that the disputed domain name comprises its trademark MICHELIN together with the generic term “obillo”, the presence of which does not prevent a finding of confusing similarity.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that while the Respondent may previously have been an authorized distributor of the Complainant’s goods1 , that is no longer the case and that the Respondent would not in any event have been entitled to register the disputed domain name, or any domain name including the Complainant’s MICHELIN trademark, under the Complainant’s relevant policies. The Complainant states that the Respondent has failed, despite demand, to cease and desist from using the Complainant’s trademark and has persisted in representing a continuing connection between itself and the Complainant. The Complainant contends that the Respondent has no rights to use the Complainant’s MICHELIN trademark, has not commonly been known by that name and is not making bona fide commercial use of the disputed domain name.

With regard to the Respondent’s website, the Complainant highlights that the Respondent is styled “Obillo Unique Investment Nigeria Limited”, that it claims to be a “Michelin Tyre service Centre” and that it advertises “Michelin Tyres with Popular Brands.”

The Complainant submits that the disputed domain name was registered and is being used in bad faith. It states that the Respondent was obviously aware of the Complainant’s trademark when it registered the disputed domain name as it has continued to offer the Complainant’s products on its website. The Complainant submits that the disputed domain name is being used in bad faith because the Respondent is using it misleadingly to indicate an official connection with the Complainant when that is no longer the case.

The Complainant further submits that the Respondent has configured email servers on the domain name, which may indicate a risk of a “phishing” scheme (although no further evidence in this regard is offered).

The Complainant adds that the Respondent has failed to respond to correspondence requesting it to cease using the Complainant’s trademark and has refused to transfer the disputed domain name to the Complainant free of charge.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:

(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 Complainant has established that it is the owner of registered trademark rights in the mark MICHELIN. The disputed domain name comprises that trademark preceded by the term “obillo”. While the significance of that term is not explained by either party, it does not prevent the Complainant’s trademark MICHELIN from being recognizable within the disputed domain name, nor does it prevent a finding of confusingly similarity between the disputed domain name and the Complainant’s trademark. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Based on the Complainant’s evidence, the Panel finds that the Respondent seems to be a former authorized distributor of the Complainant’s products. However, it is the Complainant’s evidence, which the Respondent has not disputed, that even the status of an authorized distributor would not have permitted the Respondent to register a domain name incorporating the Complainant’s MICHELIN trademark under the Complainant’s policies.

In certain limited circumstances, it may be permissible for an unauthorized reseller to use a domain name, which incorporates another party’s trademark for the purpose of reselling that trademark owner’s goods. The criteria accepted by previous UDRP panels for such legitimate use are set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and are further discussed in section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Those criteria include the requirements that the website must only offer the trademarked goods or services and that it must accurately and prominently disclose the registrant’s relationship with the trademark holder.

While the Complainant does not directly address the Oki Data Americas, Inc. v. ASD, supra (“Oki Data”) criteria in this case, the Panel finds, on the basis that of the Complainant’s evidence that the Respondent is not, or is no longer, an authorized distributor of the Complainant’s goods, that the Respondent’s website does not sufficiently disclose its relationship with the Complainant. In particular, the website prominently features a photograph of a MICHELIN branded service centre together with signage that juxtaposes the Complainant’s MICHELIN trademark with the words “HEAD OFFICE”. The website also describes the Respondent’s business as a “Michelin Tyre service Centre” without any obvious disclaimer to the effect that it is not authorized by the Complainant.

It is unclear to the Panel whether the Respondent offers only the Complainant’s goods. Its website refers to “Michelin Tyres with Popular Brands” and states that “WE STOCK ALL TIRE TYPES” and while it does not conclusively follow from these statements that the Respondent supplies other brands, the Panel finds the position unacceptably ambiguous in the absence of any evidence from the Respondent.

The Panel therefore finds that, while the disputed domain name is inherently suggestive of a commercial connection with the Complainant, the Respondent’s use of the disputed domain name does not meet the criteria set out in Oki Data for such use to amount to bona fide commercial use of the disputed domain name. There being no other evidence of rights or legitimate interests in the disputed domain name on the part of the Respondent, 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

In the view of the Panel, the Complainant has made out a prima facie case that the Respondent had no permission to register a domain name incorporating the Complainant’s MICHELIN trademark, even if it was an authorized distributor of the Complainant’s goods at the date of registration of the disputed domain name. As stated above, the Respondent has not contradicted that submission.

The Panel considers that the disputed domain name, comprising the Complainant’s trademark together with a further term that does not distinguish it, is inherently misleadingly and likely to imply a commercial connection with the Complainant. In these circumstances, and in view of the Respondent’s failure to satisfy the Oki Data criteria for the legitimate adoption of the Complainant’s trademark, it must follow that its use of the disputed domain name is not legitimate. The Panel finds in particular that, by using the disputed domain name, the Respondent has sought to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark (paragraph 4(b)(iv) of the Policy).

The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.

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 <obillomichelin.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: June 3, 2021

1 The Complainant’s evidence in this regard, including its correspondence with the Respondent, is unclear.

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