WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Super Privacy Service LTD c/o Dynadot / Wu Yu
Case No. D2021-2481
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Wu Yu, China.
2. The Domain Name and Registrar
The disputed domain name <michelinswagar.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On August 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 3, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 4, 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 6, 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 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2021.
The Center appointed Jon Lang as the sole panelist in this matter on September 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 leading tire company. The Michelin brand is one of the top-selling tire brands worldwide. Headquartered in Clermont-Ferrand, France, the Complainant is present in 171 countries and has more than 114,000 employees. It operates 69 tire manufacturing facilities and sales agencies in 17 countries, including China. In 1989, the Complainant established a representative office in Beijing, China and in December 2001, Michelin (China) Investment Co., Ltd. was established and headquartered in Shanghai.
The MICHELIN Guide was first launched in 1920 in order to help motorists plan their trips, thereby boosting car sales and in turn, tire purchases.
In 2001, ViaMichelin was set up to develop digital services for travel assistance. The Michelin Restaurants website was launched in 2012, with Michelin Mobility Apps following in 2013.
The Complainant and its MICHELIN trademark enjoy a worldwide reputation.
The Domain Name <michelinswagar.com> was registered on May 9, 2021. It redirects to a parking page displaying commercial links to third party content and offering the Domain Name for sale.
An email server has been configured for the Domain Name.
The Complainant owns numerous MICHELIN trademark registrations around the world, in particular:
- International Trademark No. 1254506 for MICHELIN, registered on December 12, 2014;
- Chinese trademark No. 9156074 for MICHELIN, registered on February 14, 2013;
- Chinese trademark No. 6167649 for MICHELIN, registered on January 7, 2010;
- Chinese trademark No. 10574991 for MICHELIN, registered on June 7, 2013.
In addition, the Complainant operates, among others, the following domain names reflecting its trademark:
- <michelin.com> registered on December 1, 1993;
- <michelinswagat.com> registered on December 18, 2012.
The Complainant made efforts to resolve the matter prior to lodging the Complaint, sending a cease‑and‑desist letter on May 14, 2021. No reply was received, despite several reminders.
5. Parties’ Contentions
The following is summary of the main assertions of the Complainant.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Domain Name is confusingly similar to the Complainant’s well-known and famous MICHELIN trademark. It reproduces the MICHELIN trademark entirely, adding the term “swagar”. It is well established that where a trademark is recognizable within a disputed domain name, the addition of descriptive, geographical, pejorative, meaningless, or other terms will not prevent a finding of confusing similarity. As the dominant feature of the Domain Name is the Complainant's MICHELIN trademark, the addition of the term “swagar” is insufficient to avoid confusing similarity between Domain Name and trademark.
The word “swagar” is a misspelling of the word “swagat”, which is a term related to the Complainant’s “Michelin Swagat” platform used for the Indian market. The false impression (that the Domain Name is somehow officially related to the Complainant and its products) is thus enhanced by the addition of the word “swagar”, with the result that Internet users may be confused into believing that the Domain Name is owned or endorsed by the Complainant or that it will direct them to an official website of the Complainant.
The Domain Name not only reproduces the Complainant’s MICHELIN trademark but also imitates the Complainant’s official domain name <michelinswagat.com>. The substitution of the last letter “t” with the letter “r”, does not significantly affect the appearance or pronunciation of the Domain Name. This practice is commonly referred to as “typosquatting”.
The generic Top Level Domain (“gTLD”) (“.com”) is generally not to be taken into consideration when examining identity or similarity between the trademark and Domain Name, being a standard registration requirement.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent is neither affiliated with nor authorized by the Complainant to use and register its MICHELIN trademark, or to seek registration of any domain name incorporating the trademark.
The Respondent cannot claim prior rights or legitimate interest in the Domain Name as the MICHELIN trademark precedes registration of the Domain Name.
The Respondent is not commonly known by the 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 Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
The Domain Name is so confusingly similar to the MICHELIN trademark that the Respondent cannot reasonably pretend it was intending to use it to develop a legitimate activity or in connection with a bona fide offering of goods and services.
The Domain Name is virtually identical to the Complainant’s domain name <michelinswagat.com> with the risk of diversion from the Complainant’s site to that of the Respondent. Typosquatting does not constitute a legitimate use of a trademark. The Respondent is making a non-legitimate use of the Domain Name with the intent of diverting consumers from the Complainant’s official website.
The Domain Name redirects Internet users to a parking page with pay-per-click links to third party content, which are likely to generate revenue. It cannot therefore be inferred that the Respondent is making a legitimate noncommercial or fair use of the Domain Name.
The Respondent did not respond to the Complainant’s communications. UDRP Panels have repeatedly stated that when Respondents do not avail themselves of their right to respond to a Complaint, it can be assumed that they have no rights or legitimate interest in the domain name at issue.
An email server has been configured at the Domain Name and thus there might be a risk that the Respondent is engaged in a phishing scheme.
Given the Complainant’s goodwill and renown worldwide, and the nature of the Domain Name which is confusingly similar to the Complainant’s trademark, it is not possible to conceive of plausible circumstances in which the Respondent could legitimately use the Domain Name, as it would invariably result in a misleading diversion of Internet users and the taking of unfair advantage of the Complainant’s rights.
The domain name was registered and is being used in bad faith.
(i) Registration in bad faith
Bad faith can be found where a Respondent “knew or should have known” of a Complainant’s trademark rights but nevertheless registered a domain name in which they had no rights or legitimate interest. The Complainant’s MICHELIN trademark registrations significantly predate the registration date of the Domain Name. It is implausible that the Respondent was unaware of the Complainant when it registered the Domain Name. The Complainant is well-known throughout the world, including China where the Respondent is located, and the composition of the Domain Name (reproducing the Complainant’s trademark MICHELIN and adding the misspelt term “swagar”), would seem to confirm its awareness. Moreover, the Domain Name reproduces virtually identically the Complainant’s own domain name <michelinswagat.com>. UDRP Panels have held that bad faith can be found where a domain name is so obviously connected with a well-known trademark, that its very use by someone with no connection to the trademark suggests opportunistic bad faith.
Given the reputation of the MICHELIN trademark, registration in bad faith can be inferred.
The Complainant’s domain name <michelinswagat.com> is deliberately misspelt by the substitution of the last letter “t” with the letter “r”. These two letters are placed next to each other on the QWERTY keyboard, thus increasing the chance that an Internet user might mistakenly type “r” rather than “t”. The practice of typosquatting is itself evidence of bad faith.
Under Section 2 of the Policy, when a registrant registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. Thus it was the Respondent’s duty to verify that registration of the Domain Name would not infringe the rights of any third party before registering it. A quick MICHELIN trademark search would have revealed the existence of the Complainant and its trademark. The Respondent’s failure to do such a search is a contributing factor to its bad faith.
Even if the Respondent was not aware of the possibility of searching trademarks online, a simple search via Google or any other search engine using the keyword “michelin”, would demonstrate that all initial results relate to the Complainant’s products or news.
It is inconceivable that the Respondent did not have the Complainant’s trademark in mind at the time of registration of the Domain Name.
(ii) Use in bad faith
There is little doubt that the Respondent was aware that the MICHELIN trademark enjoyed a substantial reputation worldwide. In the light of this, the Respondent used the Domain Name to redirect Internet users to a parking page displaying pay-per-click links which are likely to generate revenue.
The Respondent is taking undue advantage of the Complainant’s trademark to generate profits. The use of a well-known trademark to attract Internet users to a website for commercial gain constitutes use in bad faith.
There is no indication that the Respondent is carrying out its own activities at the parking page.
The clear inference to be drawn is that the Respondent is trying to benefit from the fame of the Complainant’s trademark.
It is more likely than not that the Respondent’s primary motive in registering and using the Domain Name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights through the creation of initial interest of confusion.
The Domain Name clearly constitutes a typosquatting variant of the Complainant’s own domain name <michelinswagat.com> and as previous UDRP panels have held, a finding of typosquatting is sufficient to establish use and registration in bad faith.
Moreover, an email server has been configured for the Domain Name and thus there might be a risk that the Respondent is engaged in a phishing scheme whereby it could steal valuable information such as credit card details from the Complainant’s clients or employees.
The Respondent did not respond to letters from the Complainant and bad faith can be inferred from such behaviour.
Given the Complainant’s goodwill and renown worldwide, and the confusingly similar Domain Name, it is not possible (as noted earlier) to conceive of plausible circumstances in which the Respondent could legitimately use the Domain Name given that such use would invariably result in misleading diversion and the taking of unfair advantage of the Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove: (i) that a respondent has registered a domain name which is identical or confusingly similar to a trademark or service mark in which a complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant is the owner of the MICHELIN trademark and thus clearly has rights in that mark.
Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the MICHELIN trademark followed by the word “swagar”. Accordingly, the MICHELIN trademark and Domain Name are not identical and thus the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Section 1.7 of WIPO Overview 3.0 goes on to provide “[…] in cases where a domain name incorporates the entirety of a trademark, [….] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The MICHELIN trademark is incorporated in its entirety within the Domain Name and clearly recognizable. The addition of the word “swagar” therefore does not prevent a finding of confusing similarity.
The Panel finds that the Domain Name is confusingly similar to the MICHELIN trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate non-commercial 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. Here, however, the Respondent is not known by the Domain Name, and given the nature of the website to which the Domain Name resolves as illustrated at Annex 1 to the Complaint, i.e. a parking website with links to what appear to be third party commercial websites, it cannot be said that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name suggests the very opposite – the dominant element is the Complainant’s famous MICHELIN trademark with the addition of the word “swagar”, a misspelling of the word “swagat” which is a term related to the Complainant’s “Michelin Swagat” platform used for the Indian market. It should also be noted that the Domain Name is, save in relation to its last letter, identical to the Complainant’s domain name <michelinswagat.com> (the letter “r” having been substituted for the letter “t”). To the extent the addition of the word “swagar” affects how an Internet user might perceive the Domain Name, it is likely to enhance the impression of a connection to the Complainant, rather than diminish it. In these circumstances, “use”, such as it is, could not be regarded as “fair”.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a website containing links to third-party websites. In these circumstances, it would be difficult to accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy.
In all the circumstances, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy describes a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name (provided that the respondent has engaged in a pattern of such conduct). A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. These latter circumstances appear to describe precisely the circumstances of this Complaint, although a complainant does not have to demonstrate a precise literal application of any of the paragraph 4(b) scenarios. They are non-exclusive and illustrative only, and as long as there is evidence demonstrating that a respondent is seeking to take unfair advantage of, or to abuse a complainant’s trademark, such behaviour would satisfy the general principle underlying the bad faith requirement of the Policy.
The Respondent clearly set out to create an impression of association with the Complainant and would have known that such impression of association would be inherently misleading. The use of the Domain Name to attract Internet users to the Respondent’s parked page displaying commercial links by creating a likelihood of confusion with the Complainant's mark supports a finding of bad faith. Furthermore, in these circumstances, it is difficult to contemplate any legitimate use of the Domain Name. That an email server has been configured for the Domain Name, suggesting email use has been contemplated, raises the possibility of the misleading Domain Name being used, at some point, for phishing or other illegitimate activity.
No Response was filed, or evidence of actual or contemplated good faith use provided in response to letters from the Complainant or otherwise, and no such good faith use would seem plausible. It seems very unlikely indeed that the Respondent could say anything that might provide an answer to the Complaint.
In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <michelinswagar.com> be transferred to the Complainant.
Date: October 1, 2021