WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Domain Administrator, Registrant of iranmichelin.com / Ali Sadeghi
Case No. D2021-2295
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Domain Administrator, Registrant of iranmichelin.com, United Kingdom / Ali Sadeghi, India.
2. The Domain Name and Registrar
The disputed domain name <iranmichelin.com> is registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the registrar for the disputed domain name;
(b) confirming that English is the language of the registration agreement;
(c) 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 August 6, 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 August 9, 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 August 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. On August 23, 2021, due to an apparent issue with the notification, the Center extended the due date for Response to September 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 20, 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, first established in France in 1889, is today one of the world’s leading tyre manufacturers. The Complainant also provides related services and solutions and provides what it calls “mobility experiences”. It has operations in some 171 countries, which include 68 production facilities in 17 different countries, and employs some 107,800 employees.
According to the Complaint, its products have been imported into and offered for sale in the Middle East & North Africa (MENA) region for the last 30 years. It has also been operating in India for over 10 years. The Indian operations have included a manufacturing plant established pursuant to a memorandum of understanding with the Tamil Nadu government in 2009 and a Michelin India Technology Center as well as sales and distribution.
In 1910, the Complainant published a 1/200,000 scale road map as part of the Michelin Guide. In 1926, the Guide began awarding stars for fine dining establishments, initially using only a single star. A hierarchy of zero, one, two, and three stars was introduced in 1931. In 1936, the criteria for the famous five star rating system was first published.
In 2017 (it appears), the Complainant had net sales of 21.9 billion EUROs. According to the information included in Annex 3 to the Complaint, the Complainant claims to be the No 1 ranked tyre brand in the world.
Amongst other things, the Complaint includes evidence that the Complainant is the owner of the following registered trademarks:
(a) International Registration No. 771031, MICHELIN, which was registered in June 11, 2001 in respect of a wide range of goods and services in International Classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42 and which designates some 50 countries in which protection has been obtained;
(b) European Union Trademark No. 004836359, MICHELIN, which was registered on March 13, 2008 in respect of a wide range of goods and services in International Classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16,17, 18, 20, 21, 24, 25, 26, 28, 34 and 39; and
(c) Indian registered trademarks, Application No. 1019001 (in International Class 12) and 3309763 (in International Class 35) both for MICHELIN. Application No. 1019001 was filed on June 21, 2001. Application No. 3308763 was filed on July 14, 2016. The information included in Annex 4 to the Complaint indicates that both have been registered but does not disclose the dates of registration.
According to the Registrar, the disputed domain name was first registered on July 19, 2017.
According to the Complaint, the disputed domain name initially did not resolve to an active website or email server. This was the case as of May 2021.
On May 14, 2021, the Complainant’s legal representatives sent a cease and desist letter to the Registrar, the Respondent’s identity not being disclosed in the publicly available WhoIs record.
No response was received to that letter or subsequent reminders.
As of July 7, 2021, however, the disputed domain name resolved to a website in Persian. An email server associated with the disputed domain name was also activated. The website features the Complainant’s trademark MICHELIN and the white rubber man logo prominently. According to the Complaint, the text on the website indicates it is operated by the Baharbin Trading Group which claims to be importing and selling Michelin brand tyres in Iran.
5. Discussion and Findings
No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or her case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
As noted above, the Registrar has confirmed that the language of the registration agreement is English.
Under the Rules, paragraph 11, the language of the proceeding is the language of the registration agreement for the disputed domain name unless the parties agree otherwise or the Panel determines otherwise.
The Complaint has been submitted in English.
The website to which the disputed domain name now resolves is largely in Persian. The Respondent is located in India where the official languages are Hindi and English although some states have adopted other languages as their official language.
As the Respondent has chosen to enter into the registration agreement in English, it appears that the Respondent has competence in that language or at least is to be taken as having competence in it. The Respondent also has not communicated any difficulty with or prejudice from the use of English. In these circumstances, the Panel considers it is not appropriate to depart from the default rule and, accordingly, that English is the language of the proceeding.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of a number of registered trademarks for MICHELIN as identified in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark and the term “Iran” as a prefix. As this requirement under the Policy is essentially a standing requirement, the addition of such a geographical terms does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or 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; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent or Baharbin Trading to use the disputed domain name. Nor are either the Respondent or Baharbin Trading affiliated with it.
The disputed domain name is not derived from the name of either the Respondent or Baharbin Trading. Nor is there any suggestion of some other name by which the Respondent, or Baharbin Trading, is commonly known from which the disputed domain name could be derived. From the available record, neither the Respondent nor Baharbin Trading appears to hold any trademarks for the disputed domain name.
It is not clear what the relationship between the Respondent and Baharbin Trading is. It is also not clear whether Baharbin Trading exists or is in fact offering for sale Michelin tyres as appears to be claimed on the website. As already noted, however, the Complainant states it does not have a commercial relationship with either the Respondent or Baharbin Trading and neither is one of its authorised resellers.
Panels have accepted that an unauthorised reseller may have rights or a legitimate interest in a domain name under the Policy. Usually, such a claim falls to be assessed under the so-called Oki Data factors:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
Assuming in the Respondent’s favour that Baharbin Trading is actually offering Michelin brand tyres from the website and is not also providing other brand tyres (the website does not suggest other brands are available), the problems lie with the third factor and the nature of the disputed domain name.
First, the disputed domain name itself conveys at least an implied suggestion of affiliation with the Complainant as it is likely to be seen by many internet browsers as indicating the official or at least endorsed operations of the Complainant in Iran. So, for example, WIPO Overview 3.0, section 2.5.1 which notes that:
“certain geographic terms (e.g., <trademark-usa.com>, or <trademark.nyc>), or terms with an ‘inherent Internet connotation’ (e.g., <e-trademark.com>, <buy-trademark.com>, or <trademark.online>) are seen as tending to suggest sponsorship or endorsement by the trademark owner”.
Secondly, the website to which the disputed domain name has begun resolving after May 2021 prominently features both the Complainant’s MICHELIN trademark and the white rubber Tyre Man logo.
Thirdly, it does not appear that the website clearly and prominently discloses the nature of the relationship between the Respondent and Baharbin Trading on one hand and, on the other, the Complainant. The Complaint asserts that the relationship is not accurately disclosed. A translation of the website from Persian to English by the Google Translate engine supports that assertion.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification.
The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, there can be little doubt that the Respondent was well aware of the Complainant’s MICHELIN trademark. The trademark MICHELIN is essentially an invented or coined word; it is not descriptive. The trademark itself is very well-known including in India. Although it appears that the Respondent registered the disputed domain name a number of years before Baharbin Trading apparently commenced using it, the nature of Baharbin Trading’s apparent use confirms knowledge and awareness of the Complainant and its trademark as the website purports to be importing and selling the Complainant’s products.
On the record in this case there appears to be a four year delay between the Respondent registering the disputed domain name and Baharbin Trading commencing its use. The Respondent has not sought to explain that delay. Moreover, the use by Baharbin Trading commenced only after the Complainant’s cease and desist letter.
As the term “MICHELIN” in particular is an invented or coined term and not descriptive, there appears to be little doubt that the Respondent adopted the disputed domain name because of its trademark significance and without the Complainant’s permission. A conclusion that is affirmed further by the Respondent’s later use of the disputed domain name. In circumstances where the Panel has found that the Respondent did not have rights or a legitimate interest in the disputed domain name, therefore, the Panel finds the Respondent registered the disputed domain name in bad faith. The considerations which led to the finding that the Respondent did not have rights or a legitimate interest in the disputed domain name lead also to the conclusion that the disputed domain name is being used in bad faith under the Policy.
Accordingly, the Complainant has established all three requirements under 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, <iranmichelin.com>, be transferred to the Complainant.
Warwick A. Rothnie
Date: October 5, 2021