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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. K Nandalal, BlueHost

Case No. D2021-3990

1. The Parties

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

The Respondent is K Nandalal, BlueHost, Suriname.

2. The disputed domain name and Registrar

The disputed domain name <viamichelin.online> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2021. On November 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 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 December 1, 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 December 3, 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 December 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2021. The Respondent did not submit any response. Accordingly, the Center sent notification of the Respondent’s default on December 27, 2021.

The Center appointed Petra Pecar as the sole panelist in this matter on January 5, 2022. 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 that designs and distributes tires, services and solutions, provides digital services, maps and guides to help enrich trips and travels, and develops high technology materials that serve the transportation industry.

The Complainant was stablished in 1889 and currently has sales in 170 countries and operates 117 tire manufacturing facilities and sales agencies in 26 countries. The Complainant is also the editor of the Michelin Guide and also runs digital services for travel assistance under the brand “ViaMichelin”.

The Complainant owns numerous MICHELIN trademark registrations around the world. The Complainant is, in particular, the owner of the following MICHELIN trademark registrations:

- European Union Trademark Registration No. 009914731 for MICHELIN, registered on September 27, 2011;
- International Trademark Registration No. 348615 for MICHELIN, registered on July 24, 1968;
- Brazilian trademark Registration No. 005001269 for MICHELIN, registered on July 12, 1982; and
- Brazilian trademark Registration No. 002708361 for MICHELIN, registered on July 12, 1962.

In addition, the Complainant operates, among others, the following domain names:

- <michelin.com> registered on December 1, 1993; and
- <viamichelin.com> registered on November 7, 2000.

The disputed domain name was registered on July 13, 2021, and does not resolve to any active 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 August 18, 2021 through the Registrar, asserting the Complainant’s trademark rights and requesting the transfer of the disputed domain name. On August 26, 2021, the Registrar confirmed that a copy of the Complainant’s complaint had been sent to the registrant of the disputed domain name. According to the Complainant, no response was received from the Respondent, despite several reminders.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN, since the disputed domain name reproduces the Complainant’s trademark in its entirety. The Complainant states that its MICHELIN trademark enjoys a worldwide reputation, which has been confirmed by previous UDRP panels that have considered this trademark to be well known or famous. Further, the Complainant asserts that in many UDRP decisions, panels consider that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark. The Complainant’s MICHELIN trademark is preceded by the word “via”, thereby making a direct reference to the Complainant’s brand “ViaMichelin” and its domain name <viamichelin.com> used for digital services for travel assistance. In addition, the Complainant contents that the Top-Level Domain (“TLD”) “.online” is irrelevant under the first element confusing similarity test as it is merely a requirement when registering a domain name.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is neither affiliated with the Complainant in any way nor has been authorized by the Complainant to use its trademarks, or to seek registration of any domain name incorporating such mark. In addition, the Respondent is not commonly known by the disputed domain name or by the name “Michelin”. According to the Complainant, the nature of the disputed domain name is likely to mislead Internet users into believing that the disputed domain name is connected to the Complainant’s business. The disputed domain name directs to an inactive website. The Complainant therefore concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.

Finally, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. According to the Complainant’s allegations, it is implausible that the Respondent was unaware of the existence of the Complainant and its trademarks at the time of registration of the disputed domain name given the worldwide reputation of the Complainant and its MICHELIN trademarks and the composition of the disputed domain name entirely reproducing the Complainant’s trademark MICHELIN and the tradename “ViaMichelin”. The Respondent could simply not have chosen the disputed domain name for any reason other than to deliberately cause confusion amongst Internet users in order to capitalize on or otherwise take unfair advantage of the Complainant’s rights, goodwill and reputation, which clearly constitutes bad faith. The Complainant further contends that the state of inactivity of the disputed domain name does not prevent a finding of bad faith use in accordance with the passive holding doctrine.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1). The Panel finds that the Complainant has established its rights in the MICHELIN trademark, based on its numerous trademark registrations in a number of countries around the world.

The disputed domain name incorporates the MICHELIN trademark in its entirety, with addition of the term “via” and TLD “. online”. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of another term to such mark. Such additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity in accordance with section 1.8 of the WIPO Overview 3.0.

It is well accepted practice by UDRP panels that a TLD, such as “. online”, is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark (see section 1.11 of the WIPO Overview 3.0). Accordingly, the Panel determines that the disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark.

In accordance with the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or 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; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial 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.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Panel holds that the Complainant has made a prima facie case showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it has never authorized the Respondent to use its MICHELIN trademark as part of the disputed domain name and that the Respondent is not commonly known by the disputed domain name. Further, the disputed domain name does not resolve to any active website.

Numerous previous UDRP panels have found that the Complainant’s MICHELIN trademark is well known (see for example Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu, WIPO Case No. D2014-1240 and Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios, WIPO Case No. D2017-0234) and the Panel also holds that the MICHELIN trademark certainly enjoys reputation throughout the world. Having in mind the well-known status of the Complainant’s trademark, the Panel sides with the Complainant’s argument that it is indeed difficult to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name.

The Respondent has failed to submit a response to the Complaint and therefore has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy, or of any other circumstances, that would give rise to rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has made a prima facie case showing the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name, which has not been rebutted by the Respondent.

The Panel therefore finds that the Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires the Complainant to demonstrate that the Respondent registered and is using the disputed domain name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Further, paragraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the 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 its website or location.

Based on the evidence provided by the Complainant, there is no doubt that the Respondent was aware of the Complainant and its well-known MICHELIN mark at the time of the registration of the disputed domain name. The Respondent seems to have targeted the Complainant, when it registered the disputed domain name. Namely, the Panel observes that the Respondent registered the disputed domain name, which incorporates the Complainant’s well-known MICHELIN trademark in its entirety, along with the term “via”, thereby forming the name of the Complainant’s “ViaMichelin” brand which is used for the Complainant’s digital travel assistance products and services. Given the fame of the MICHELIN trademark and the fact that the disputed domain name is so obviously connected with the Complainant’s trademark and its brand “ViaMichelin” and the disputed domain name is almost identical to the Complainant’s domain name <viamichelin.com>, the panel holds that the disputed domain name was registered in bad faith.

The disputed domain name does not resolve to any active web page. The fact that the domain name is not actively used does not prevent a finding of bad faith use of the disputed domain name. For that reason, the Panel has assessed whether the lack of actual use of the disputed domain name can lead to a finding of bad faith against the Respondent. UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of so-called “passive holding”. In accordance with section 3.3 of the WIPO Overview 3.0, the relevant factors that should be taken into account when assessing the existence of bad faith in the passive holding of a domain name are the following: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. It should be borne in mind that it is not required that all the above-listed factors be present in order to establish bad faith use of the disputed domain name.

In the case at hand, it is obvious that the majority of factors determined within section 3.3 of the WIPO Overview 3.0 have been established. First, the Complainant’s MICHELIN trademark is distinctive and enjoys a high reputation as was confirmed by numerous previous UDRP panels. Secondly, the Respondent has failed to provide any response to the Complaint. The Respondent has therefore, failed to provide any relevant evidence of actual or contemplated good-faith use of the disputed domain name. Finally, and in connection with the previous points, it seems rather implausible that there could be any good faith use of the disputed domain name having in mind that the disputed domain name contains the well-known MICHELIN trademark in its entirety and that the disputed domain name is structured in a manner mimicking the Complainant’s “ViaMichelin” band and its domain name <viamichelin.com>. Having in mind the above, the Panel holds that the disputed domain name indeed can be considered to be used in bad faith in accordance with the passive holding doctrine.

In conclusion, in this particular case, where the Respondent failed to submit a reply to the Complainant’s contentions, the Panel determines that, for all of the above reasons, the disputed domain name was registered and is being used in bad faith.

Accordingly, the Complainant has satisfied the third element of the Policy in accordance with paragraph 4(a)(iii) of the Policy.

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, <viamichelin.online>, be transferred to the Complainant.

Petra Pecar
Sole Panelist
Date: January 19, 2022

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