WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale Des Etablissements Michelin v. Domain Admin, Whois Privacy Corp.
Case No. D2021-4060
1. The Parties
The Complainant is Compagnie Générale Des Etablissements Michelin, France, represented by Tmark Conseils, France.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <bggoodrichtires.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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 December 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2022.
The Center appointed Mladen Vukmir as the sole panelist in this matter on January 31, 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 disputed domain name was registered on May 8, 2021.
The Complainant is the owner of a worldwide portfolio of registered trademarks BFGOODRICH, among others:
- Bahamas trademark registrations No. 26182 and No. 26183 for BFGOODRICH, registered on September 16, 2003;
- United States Registration No. 1087694 for BFGOODRICH, registered on March 21, 1978; and,
- French trademark registration No. 3447866 for BFGOODRICH, dated August 29, 2006.
The Complainant’s mark BFGOODRICH has been used in North America for more than 150 years ago (in 1870). The worldwide reputation of the trademark BFGOODRICH has been recognized in previous UDRP decisions, particularly:
- Michelin Recherche et Technique S.A. v. Wang, WIPO Case No. DCC2O16-0001;
- Compagnie Generale des Etablissements Michelin, Michelin et Cie, Michelin Recherche et Technique S.A. v. Alvaro Collazo, WIPO Case No. D2004-1095; and,
- Compagnie Générale des Etablissements Michelin v. Registration Private, Trustcor Systems S. De R.L., WIPO Case No. D2018-1096.
The Complainant is the registrant of various domain names incorporating trademark BFGOODRICH such as:
- <bfgoodrich.com>, registered on August 15, 1996; and,
- <bfgoodrichtires.com>, registered on June 19, 1997.
The disputed domain name redirects Internet users to monetized parking web pages.
5. Parties’ Contentions
The Complainant states that it is the registered proprietor of BFGOODRICH trademark in numerous countries in the world (notably in the Bahamas where the Respondent is located), and that due to its long and intensive use, it has acquired substantial reputation. In that regard, BFGOODRICH mark can be termed as a well-known trademark according to the Paris Convention regulations – art. 6 bis of the Paris Convention.
The Complainant contends that the disputed domain name incorporates almost entirely the earlier well‑known BFGOODRICH trademarks and domain names registered and owned by the Complainant prior than the disputed domain name registration.
The Complainant contends that the strong spelling similarity between the disputed domain name and BFGOODRICH trademark, based on the replacement of one letter by another, constitutes a typical case of typosquatting, designed to confuse. According to the Complainant, this typosquatting registration, by only replacing the letter “f” with the letter “g” and adding the generic Top-Level Domain (“gTLD”) “.com”, does not in any way prevent the said confusing similarity. The Complainant states that the disputed domain name incorporates the term “bggoodrich” which is almost identical to the trademark BFGOODRICH.
The Complainant further contends that the Respondent has no rights or legitimate activity under the name “bfgoodrich”. The Complainant protected the trademark BFGOODRICH, and its domain names are used on a worldwide basis in connection with products and services related to the tires industry. BFGOODRICH is not a generic term but a registered distinctive trademark owned by the Complainant. There appears to be no legitimate reason why the Respondent would incorporate the Complainant’s well-known trademark and domain name in the disputed domain name. The disputed domain name appears to have been registered with the intent that confused Internet users searching for the Complainant would be directed to the Respondent’s monetized parking page.
The Complainant contents that it has not authorized any third-party to identify itself to the public as “bfgoodrich” or “bggoodrichtires” or to use the BFGOODRICH trademark.
The Complainant holds that the disputed domain name is registered in bad faith. According to the Complainant, the trademark BFGOODRICH is very well-known all around the world, especially in the United States of America and in the Bahamas. Moreover, according to the information obtained in the WhoIs records, the Respondent is located in the Bahamas, which is geographically close to the United States of America, and especially the State of Florida.
The Complainant states that typosquatting of its distinctive and well-known trademark BFGOODRICH, leading to a confusing similarity, renders difficult to infer a legitimate use of the disputed domain name. According to the Complainant, the Respondent makes commercial use of the disputed domain name, which almost incorporates the Complainant’s trademark. The disputed domain name redirects Internet users to a parking page that contains commercial links related to the tire industry, as well as to a website on which it is stated that the disputed domain name is available for sale.
The Respondent did not reply to the Complainant’s contentions, and therefore, the Complainant’s contentions have not been rebutted.
6. Discussion and Findings
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Respondents default, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the disputed domain name is confusingly similar to a trademark 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.
A. Identical or Confusingly Similar
The Panel holds that the disputed domain name is confusingly similar to the Complainant’s BFGOODRICH trademarks.
Primarily, the Panel emphasizes that it is generally accepted that ownership of a registered trademark by a complainant is generally sufficient to satisfy the threshold requirement of having the trademark rights, i.e., the Complainant’s trademark registrations constitute “prima facie evidence of the validity of the trademark” (section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has submitted sufficient evidence to show that it is the owner of a number of BFGOODRICH trademarks. From the documents presented by the Complainant, it arises that the Complainant is the holder of a number of BFGOODRICH trademarks, which are duly registered before competent trademark authorities. As such, these trademarks provide to the Complainant all the exclusive rights that are granted with such trademark registrations.
In accordance with section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element, especially when such typos include adjacent keyboard letters.
After performing the straightforward visual and aural comparison of the disputed domain name and the Complainant’s BFGOODRICH trademarks, it is evident to this Panel that the disputed domain name incorporates the Complainant’s BFGOODRICH trademark almost in its entirety. The difference between the disputed domain name and the Complainant’s BFGOODRICH trademark is the in second letter (“f” replaced with “g”), and the addition of the term “tires” to the disputed domain name.
In this Panel’s view, the disputed domain name is purposefully misspelled by substituting the letter “f” with the letter “g”, which are adjacent letters on the standard QWERTY keyboard. The Panel holds that this conduct, commonly referred to as typosquatting creates a virtually identical and/or confusingly similar mark to the Complainant’s BFGOODRICH trademark under paragraph 4(a)(i) of the Policy. This Panel’s conclusion is in line with views taken by panels in earlier UDRP cases (see Sanofi v. Domains by Proxy, LLC / domain admin, WIPO Case No. D2013-0368; and Sanofi, Genzyme Corporation v. Domain Privacy, WIPO Case No. D2016-1193).
The addition of the word “tires” to the Complainant’s trademark in the disputed domain name has no effect on the confusing similarity of the disputed domain name. In earlier UDRP decisions panels determined that, if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words. It is well-established that the addition of a term to a trademark does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).
With respect to the gTLD “.com” in the disputed domain name, it is generally accepted that it may be disregarded under the confusing similarity test (see section 1.11 of the WIPO Overview 3.0).
For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e., has proven that the disputed domain name is confusingly similar to its BFGOODRICH trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [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) Where [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. ”
As noted by previous UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, and as summarized in section 2.1 of the WIPO Overview 3.0: “[…]While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 […]”.
In the present case, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name, with the Respondent failing to provide any reply to the Complaint.
Namely, the Complainant has established that it is the owner of a number of BFGOODRICH trademarks in various jurisdictions, as well as that it has used the same trademarks widely on the market including through the Complainant’s website “www.bfgoodrichtires.com”, and others, so that it may be recognized as well known within the relevant circles.
The Panel observes that there is neither any relation, disclosed to the Panel nor otherwise apparent from the records, between the Respondent and the Complainant, nor does it arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its BFGOODRICH trademarks, or any misspellings thereof, or to apply for or use any domain name incorporating the same trademarks.
Furthermore, there is no evidence that the Respondent has been commonly known by the disputed domain name. Also, there is no evidence in the case file or otherwise apparent to the Panel that the Respondent has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
From the evidence presented by the Complainant, it arises that the disputed domain name resolves to a website offering parking page services of commercial links relating to the tire industry as well as to a website stating that this domain name is available for sale. In this Panel’s opinion, the Respondent deliberately misspelled the Complainant’s well-known BFGOODRICH trademarks in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers to the Respondent’s website.
There is no evidence that the Respondent has any legitimate reason to use the disputed domain name. The Respondent only diverted Internet users who mistakenly type the name “bggoodrich”.
Using the Complainant’s misspelled mark as a domain name to divert traffic to a parking page of commercial links relating to the tire industry as well as to a website stating that this domain name is available for sale.is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the domain name.
Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant’s making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failing to produce any arguments or evidence to the contrary.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
“(i) circumstances indicating that the holder has registered or has 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.”
The Panel accepts the Complainant’s arguments substantiated by evidence that the Respondent has registered and used the disputed domain name in bad faith. The Complainant filed sufficient evidence to prove that its BFGOODRICH trademarks are well-known around the world. It is highly unlikely that the Respondent was unaware of the Complainant and its BFGOODRICH trademarks when it registered the disputed domain name.
The Respondent’s practice of using the disputed domain name for the purpose of diverting users to an unrelated Internet site is “classic bad faith” (see Backstreet Productions., Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654). Furthermore, misspellings of a trademark may constitute further evidence of bad faith under paragraph 4(b)(iv) of the Policy as the Respondent has used the disputed domain name intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark (see AltaVista Co. v. Saeid Yomtobian, WIPO Case No. D2000-0937).
By registering a visually and phonetically similar domain name to the Complainant’s trademark that is simply a misspelling of that mark, the Respondent is attempting to take advantage of the Complainant’s reputation by capturing traffic from Internet users looking for the Complainant, but misspelling its name. This form of typosquatting supports a finding of bad faith within the meaning of the Policy (see Sanofi-aventis v. Elizabeth Riegel and Andrew Riegal, WIPO Case No. D2005-1045; and Est’e Lauder Inc. v. estelauder.com and Jeff Hanna, WIPO Case No. D2000-0869).
Although the use of a privacy or proxy registration service is not itself an indication of bad faith, this Panel holds that the use of such service in this case may be taken as further indication of bad faith on the side of the Respondent. Such position of the Panel is in line with findings of previous UDRP panels (see section 3.6. of the WIPO Overview 3.0. and cases cited therein).
Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith, and that the Complainant has fulfilled the third element under paragraph 4(a) of 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 <bggoodrichtires.com> be transferred to the Complainant.
Date: February 14, 2022