WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-3085

1. The Parties

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

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <michelinspups.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2021. On September 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 September 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2021.

The Center appointed Angela Fox as the sole panelist in this matter on November 14, 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 manufacturer of tires and provider of travellers’ maps and guides, headquartered in Clermont-Ferrand, France, but present in 171 countries, and with more than 114,000 employees. It began trading in 1889 and the first MICHELIN Guide for use by motorists in planning road trips was launched in 1920. The MICHELIN Guide also awarded stars and rankings to restaurants and later to hotels, expanding their remit of services to motorists. The Complainant continues to supply maps, digital route-planning tools and other apps for the assistance of motorists. All of these activities have been and are carried out under the MICHELIN trademark.

The Complainant is the proprietor of numerous trademark registrations for or including MICHELIN, which it claims has acquired a worldwide reputation. The Complainant supplied details of the following trademark registrations:

- International Trademark MICHELIN No. 771031, registered on June 11, 2001, covering goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, and 42, and designating among others China, United Kingdom, Spain, Russian Federation, and Viet Nam.

- European Union trademark MICHELIN No. 004836359, registered on March 13, 2008, duly renewed and covering goods and services in classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34, and 39;

- U.S. trademark No. 3684424, registered on September 15, 2009, and duly renewed, covering goods and services in classes 3, 5, 7, 8, 9, 11, 12, 16, 20, 25, 27, and 28.

The Complainant also owns the domain name <michelin.com> registered on December 1, 1993, which it uses to promote its products and services.

The disputed domain name was registered on February 5, 2021. It has been used to resolve to various websites, including a page requesting the installation of software and a page featuring what appear to be pay-per-click links under various topic headings, including “Map Data Google”, “Maps for Routing”, and “Road Map Planning”.

The Complainant sent a cease and desist letter to the disputed domain name registrant via the listed privacy service on April 29, 2021, asking it to cease use of the disputed domain name and to transfer it free of charge to the Complainant. No response was ever received despite the Complainant having sent reminders via email and online notification. This Complaint was filed on September 17, 2021.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s well-known trademark MICHELIN, which it reproduces in its entirety. The Complainant argues that the disputed domain name associates the Complainant’s trademark with the word “pups”, which the Complainant says is a generic term, and the letter “s”, which merely creates a possessive form, and does not prevent a likelihood of confusion.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither affiliated with the Complainant nor has it been authorized by the Complainant to use and register its trademark, nor to register the disputed domain name incorporating that trademark. The Respondent is not commonly known by the disputed domain name or the name “Michelin”, nor is there any evidence that, before any notice of this dispute, it had used or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. The Complainant avers that the pay-per-click page, for which the disputed domain name has been used, contains links targeting the Complainant’s field of activity, and takes unfair advantage of the Complainant’s goodwill and reputation for the Respondent’s financial gain. Consequently, the Complaint contends that the Respondent has not shown any intention to make any noncommercial or fair use of the disputed domain name. The Complainant also points to the fame of the MICHELIN trademark and asserts that it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in unfair advantage and misleading diversion of Internet users.

Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith. The Complainant asserts that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name, and that the disputed domain name is so obviously connected with the well-known MICHELIN trademark that its very use by someone with no connection to the Complainant suggests opportunistic bad faith. The Complainant also notes that under paragraph 2 of the Policy, when a domain name is registered, the holder represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. The Complainant states that a trademark search would have revealed to the Respondent the existence of the Complainant and its trademarks, and that registration in spite of this is further evidence of bad faith. Furthermore, the Complainant points to the Respondent’s use of a privacy shield service to hide its identity and contact details as further evidence of registration in bad faith.

The Complainant further submits that the Respondent is using the disputed domain name to falsely imply that the Complainant is connected to the disputed domain name or has endorsed it, as well as to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website, which displays pay-per-click links including on topics relating to the Complainant’s core business, which are likely to generate revenues for the Respondent. The Complaint asserts that it is more likely than not that the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainants’ trademark rights through the creation of initial interest confusion. Finally, the Complainant states that an e-mail server has been configured on the disputed domain name and thus there is a risk that the Respondent is engaged in a phishing scheme.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds 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 the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has proved that it has registered trademark rights in MICHELIN and previous UDRP panels have accepted that this trademark is well-known and has a worldwide reputation (see inter alia, Compagnie Générale des Etablissements Michelin v. World Industrial, LNQ, WIPO Case No. D2019-0553; Compagnie Générale des Etablissements Michelin v. Kanoksak Puangkham, WIPO Case No. D2018-2331; and Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios, WIPO Case No. D2017-0234).

The disputed domain name includes MICHELIN in its entirety, adding only the letter string “spups”. This letter string is not a known word in the English language nor to the best of the Panel’s knowledge in any language, although “pups” would be understood in English as denoting certain juvenile animals, such as dogs or seals. Given the fame of the MICHELIN mark, the Panel considers that the “spups” letter string attached to “michelin” renders the whole into a form likely to be understood as the possessive, i.e. “Michelin’s pups”. The additional letter string does not prevent confusing similarity with the well-known MICHELIN mark, which appears in its entirety in the disputed domain name.

The Panel finds that the disputed domain name is similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The burden of proving absence of rights or legitimate interests in a domain name falls on complainants, but panels have long recognized that the information needed to prove such rights or legitimate interests is normally in the possession of respondents.

In order to avoid requiring complainants to prove a negative, which will often be impossible, UDRP panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the respondent carries the burden of proof that it does indeed have such rights or interests (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In the present case, the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is nothing on the record to indicate that the Respondent might have such rights or legitimate interests, nor has the Respondent attempted to make one out. The Complainant has not authorized the Respondent to use the disputed domain name, nor is there any evidence that the Respondent has ever been commonly known by it.

The Respondent has been using the disputed domain name to link to various pages, including a parking page, and the image of that page annexed to the Complaint shows that it has included what appears to be pay-per-click links to topics such as “Map Data Google”, “Maps for Routing”, and “Road Map Planning”. The Complainant’s MICHELIN mark has a reputation in relation to maps and trip planning, and given the fame of the MICHELIN mark it is more likely than not that the Respondent was aware of the Complainant’s brand when it registered the disputed domain name. Since it is likely that the Respondent is profiting from pay-per-click links, this is not a noncommercial use, and given that the presence of the Complainant’s well-known MICHELIN mark within the disputed domain name is what renders it apt to attract Internet users interested in maps and trip planning, it is not a fair use, either. Such implied affiliation similarly pre-empts any claims to fair use as to the dynamic redirect to pages allegedly offering the installation of software.

The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, the Panel may find both registration and use in bad faith where there is evidence that by using the domain name, a 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 a 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 it.

In this case, the Respondent has adopted the disputed domain name, which incorporates the Complainant’s well-known trademark and is confusingly similar to it, and has used that disputed domain name to host, among other content, pay-per-click links to content relating to good and services for which the Complainant’s mark is well-known, namely maps and trip planning. Such activities demonstrate that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant. Such conduct is inherently misleading and in the Panel’s view is evidence of registration and use in bad faith.

Clearly if there were evidence that the Respondent had used or was preparing to use the disputed domain in connection with a phishing scheme, that would also support a finding of registration and use in bad faith (referring to Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225). The existence of an email server connected with the disputed domain name is, in the Panel’s view, a relevant fact in this regard given the reputation of the MICHELIN mark, the inherently misleading nature of the disputed domain name, and the prevalence of online fraud. It is easy to imagine emails emanating with an address referencing the disputed domain name being mistaken as emanating from the Complainant, and for recipients of such emails to divulge personal or financial information in the mistaken belief that they are dealing with the Complainant. The Respondent has provided no alternative explanation of its conduct. Although there is no evidence that the disputed domain name has in fact been used in connection with phishing to date, the Panel has concluded that, in the totality of circumstances, there is no plausible case for any form of good faith use by the Respondent.

Taking all of this into account, the Panel finds that the disputed domain name has been registered and 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, <michelinspups.com> be transferred to the Complainant.

Angela Fox
Sole Panelist
Date: November 28, 2021