WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Whois Privacy Service / Jeremy L Defalco

Case No. D2021-2403

1. The Parties

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

The Respondent is Whois Privacy Service, United States of America / Jeremy L Defalco, Canada.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 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 July 27, 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 July 29, 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 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2021.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on September 3, 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 Compagnie Générale des Etablissements Michelin (“Michelin”), a leading tire company, which is dedicated to enhancing its clients’ mobility, sustainably, designing and distributing suitable tires, services and solutions, providing digital services, maps and guides to help enrich trips and travels, and developing hightechnology materials that serve the mobility industry.

Established in 1889, the Complainant has sales in 171 countries and factories in 69 countries. The Complainant is also the editor of the well-known travel and restaurant guides Michelin and runs also digital services for travel assistance under the brand ViaMichelin.

The Complainant and its trademark MICHELIN enjoy a worldwide reputation. The Complainant owns numerous MICHELIN trademark registrations around the world. The Complainant is in particular the owner of the following MICHELIN trademark registrations throughout the world:

- Canadian trademark MICHELIN No. TMA214191, registered on June 11, 1976 and duly renewed, covering goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 35, 36, 39, 40, 41, 44, and 45;

- International trademark MICHELIN No. 771031, registered on June 11, 2001 and duly renewed, covering goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, and 42;

In addition, the Complainant operates, among others, a series of domain names reflecting its trademark in order to promote its services.

The Respondent registered the disputed domain name on March 2, 2021. The disputed domain name resolves to an inactive page.

Before starting these proceedings, the Complainant made some efforts to resolve this matter amicably and sent a cease and desist letter to the registrant of the disputed domain name on April 8, 2021, asserting its trademark rights and requesting them to cease the use of the disputed domain name and to transfer it free of charge. As no reply was obtained, despite several reminders, on May 10, 2021, the Complainant sent a notification to the hosting company requesting the deactivation of the email servers. The Complainant did not receive a satisfying answer.

5. Parties’ Contentions

A. Complainant

By the Complaint, the Complainant contends that:

- The disputed domain name reproduces the Complainant’s trademark MICHELIN in its entirety, which previous Panels have considered to be “well-known” or “famous”.

- The disputed domain name associates the Complainant’s trademark with the term “aviation”, which does not prevent any likelihood of confusion. The adjunction of a term is insufficient to avoid confusing similarity between the disputed name and the Complainant’s trademark.

- The full inclusion of the Complainant’s trademark MICHELIN in combination with the term “aviation” enhances the false impression that the disputed domain name is officially related to the Complainant. The disputed domain name is likely to confuse Internet users into believing that said domain name is owned by Michelin in order to provide or organize the aviation services. Finally, the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name, as it is viewed as a standard registration requirement.

- 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. Furthermore, the Respondent cannot claim prior rights or legitimate interests in the disputed domain name as the MICHELIN 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”, in accordance with paragraph 4(c)(ii) of the Policy. There is no evidence that the Respondent may be commonly known by the name “Michelin”.

- As mentioned, the Respondent is neither known by the name “Michelin” nor in any way affiliated with the Complainant, nor authorized or licensed to use the MICHELIN trademark, or to seek registration of any domain name incorporating the aforementioned trademark.

- 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 domain name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy.

- The disputed domain name resolves to an inactive page. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name.

- It is most likely to be believed that the Respondent has no legitimate interests or rights in the disputed domain name. Furthermore, the Respondent never answered to Complainant’s letter despite the Complainant’s reminders.

- Regarding the presence of the email servers, the Respondent might be engaged in a phishing scheme, a practice intended to defraud consumers into revealing personal and/or financial information.

- It seems that the Respondent registered the disputed domain name with a privacy shield service to hide his identity and prevent the Complainant from contacting him, such a behavior highlighting the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

- Given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is confusingly similar to the Complainant’s trademark, 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.

- The Respondent “knew or should have known” of the Complainant’s trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interests as the Complainant is well-known throughout the world, including Canada, and the composition of the disputed domain name, which entirely reproduces the Complainant’s trademark MICHELIN and associates it to the term “aviation” confirms that the Respondent was aware of the Complainant and its trademark.

- The Complainant’s MICHELIN trademark registrations significantly predate the registration date of the disputed domain name.

- Taking into account the worldwide reputation of the Complainant and its trademark, as well as the high level of notoriety of the Complainant, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademark at the time of registration of the disputed domain name.

- The Respondent registered the disputed domain name through a privacy shield service to hide his identity and contact details, thus, preventing the Complainant from contacting him.

- In the absence of any license or permission from the Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.

- The disputed domain name is currently inactive.

- Passive holding does not preclude a finding of bad faith.

Given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name which is confusingly similar to the Complainant’s trademark, 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

The Complainant has established its rights in the MICHELIN trademark.

The Panel finds that the disputed domain dame reproduces the Complainant’s trademark in its entirety and adds the term “aviation”. Such addition does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.

According with the UDRP practice and precedent, the addition of a term does not prevent a finding of confusing similarity between the disputed name and the complainant’s trademark. (See Pandora A/S v. Domain Admin, Privacy Protect LLC (PrivacyProtect.org) / Robin Puckett, WIPO Case No. D2018-0586,).

Moreover, the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name, as it is viewed as a standard registration requirement. See section 1.11 of the WIPO Overview 3.0.

Therefore, this Panel finds the disputed domain name is confusingly similar to the trademark MICHELIN in which the Complainant has rights, and therefore the first element of Paragraph 4(a) is established.

B. Rights or Legitimate Interests

In order to establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes a prima facie showing, the burden of production shifts to the Respondent (see WIPO Overview 3.0, section 2.1).

In these proceedings, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as it did not reply to the Complainant’s contentions.

Moreover, the Complainant’s trademark MICHELIN has been found to be well known by previous UDRP panels, see for example, Compagnie Générale des Etablissements Michelin v. Fan Jian Xia, WIPO Case No. D2018-0126.

Given the distinctiveness of the Complainant’s trademark and reputation at the time of the registration of the disputed domain name and the contentions of the Complainant according to which the Respondent is neither known by the name “MICHELIN” nor in any way affiliated with the Complainant, nor authorized or licensed to use the MICHELIN trademark, or to seek registration of any domain name incorporating the aforementioned trademark, it is reasonable to infer that before any notice of this dispute, the Respondent was not using, nor 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, in accordance with paragraph 4(c)(i) of the Policy.

The disputed domain name resolves to an inactive page. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name.

In the opinion of this Panel, the Complainant has sufficiently demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is therefore, established.

C. Registered and Used in Bad Faith

There are certain circumstances invoked by the Complainant which indicate a finding of bad faith registration and use of the disputed domain name.

First, the disputed domain name resolves to an inactive page and there is no evidence of the Respondent’s reasonable and demonstrable preparations to use the disputed domain name. According to WIPO Overview 3.0, section 3.3, panelists found that the non-use of a domain name would not prevent a finding of bad faith use under the doctrine of passive holding.

Furthermore, the Respondent never answered to the Complainant’s cease-and-desist letter despite the Complainant’s reminders.

Also, the presence of the email servers might indicate that the Respondent is engaged in a phishing scheme, a practice intended to defraud consumers into revealing personal and financial information, which by itself represent a bad faith use of the disputed domain name.

Moreover, there is the fact that the Respondent registered the disputed domain name with a privacy shield service. Considering the circumstances of the case according to WIPO Overview 3.0, section 3.6, for this Panel it appears that the Respondent employed the privacy service merely to avoid being notified of a UDRP proceeding filed against it, which supports an inference of bad faith registration and use.

Last but not least, given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, the Panel agrees with the Complainant that the inclusion of the Complainant's trademark MICHELIN in combination with the term “aviation” creates the false impression that the disputed domain name is somehow related to the Complainant. The disputed domain name is likely to confuse Internet users into believing that the disputed domain name is owned by the Complainant in order to provide or organize aviation services.

Therefore, according to WIPO Overview 3.0, section 3.2.2, this Panel finds that the Respondent “knew or should have known” of the Complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interests, which is a strong indication of bad faith registration.

Considering the above, the Panel holds that the disputed domain name was registered and used in bad faith and the third element of paragraph 4(a) of the Policy is also established.

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 <michelinaviation.com> be transferred to the Complainant.

Dr. Beatrice Onica Jarka
Sole Panelist
Date: September 14, 2021