WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Mohan Lal
Case No. DAU2017-0038
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Mohan Lal of Hampton Park, Australia.
2. The Domain Name and Registrar
The disputed domain name <michelin.net.au> (the “Domain Name”) is registered with Web Address Registration Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2017. On December 5, 2017, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Domain Name. On December 15, 2017, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and the date of registration of the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2018.
The Center appointed Alan L. Limbury as the sole panelist in this matter on January 11, 2018. 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
With a history dating back to 1889, the Complainant manufactures and sells vehicle tyres around the world, including, since the 1940s, in Australia, where it is the proprietor of registered trademark MICHELIN, No. 258104, registered from May 1, 1972 in Class 12 for pneumatic tyres for vehicle wheels and inner tubes for pneumatic tyres. The Complainant is also the registrant of the domain names <michelin.com> and <michelin.com.au>.
The Domain Name was registered on December 6, 2016. As at January 20, 2017, it resolved to a web page containing the logo of the Complainant’s trademark MICHELIN and promoting the tyres of both the Complainant and its competitors. Following a cease-and-desist letter to the Respondent dated March 29, 2017 from the Complainant’s representative, by April 6, 2017 the website had been deactivated and it remains deactivated at the time of this decision.
5. Parties’ Contentions
The Domain Name is identical to the Complainant’s MICHELIN trademark. The Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered or subsequently used in bad faith.
As to legitimacy, the Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its MICHELIN trademark nor to seek registration of any domain name incorporating that mark, which preceded the registration of the Domain Name by some years. Even if the Respondent were an authorized seller of the Complainant’s tyres, his initial website offering was definitely not “bona fide” since it offered competitors’ tyres in addition to MICHELIN tyres and did not disclose the Respondent’s relationship with the Complainant. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Since the Domain Name now does not resolve to an active website, the Respondent fails to show any intention of noncommercial or fair use of the Domain Name. It may be inferred that the Respondent has no legitimate interest or rights in the Domain Name, which is probably the reason why the Respondent deactivated the initial website after receiving the Complainant’s cease-and-desist letter.
As to bad faith registration, the Domain Name, which is identical to the Complainant’s MICHELIN trademark, pointed to a webpage referring to tyres, the Complainant’s field of activity. Hence the Respondent must have had the MICHELIN trademark in mind when registering the Domain Name. Given the reputation of the MICHELIN trademark throughout the world including Australia, registration in bad faith can be inferred.
As to bad faith use, the Domain Name initially resolved to a page offering for sale tyres under the trademark MICHELIN as well as under other third party trademarks. Such use constitutes use in bad faith as the Domain Name was used for commercial gain with the intention to mislead Internet users as to the affiliation of the website: Dr. Ing. h.c. F. Porsche AG v. Prima B.V., WIPO Case No. DNL2009-0047.
The fact that the website to which the Domain Name resolved is presently inactive does not preclude a finding of bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Reproducing a famous trademark in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.
The Complainant made further submissions in relation to legitimacy and bad faith which it is unnecessary to summarise.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules provides: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires the Complainant to prove, on the balance of probabilities, each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered or has subsequently been used in bad faith.
The Respondent is not obliged to participate in this proceeding under the Policy, but since he has failed to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant. See Harness Racing Australia v. Acronym Wiki Pty Ltd, WIPO Case No. DAU2011-0007.
A. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trademark MICHELIN and the inconsequential suffixes “net.au”, which may be disregarded. Accordingly, the Domain Name is identical to the Complainant’s MICHELIN trademark.
The Complainant has established this element.
B. Rights or Legitimate Interests
As has been determined in numerous Uniform Domain Name Dispute Resolution Policy decisions cited by the Complainant, the Panel finds that the MICHELIN trademark is distinctive and world famous. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that he does have rights or legitimate interests in the Domain Name. See TeamViewer GmbH v. Nigel Burke, WIPO Case No. DAU2012-0027, citing Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has established this element.
C. Registered or Subsequently Used in Bad Faith
The Panel finds it inconceivable, given the distinctiveness and fame of the Complainant’s MICHELIN trademark, that the Respondent was unaware of that mark when registering the Domain Name. The use to which the Domain Name was put within a few weeks of its registration supports this conclusion. Accordingly the Panel finds that the Domain Name was registered by the Respondent, a person with no connection to or permission from the Complainant, in bad faith for the purpose of unfairly trading off the reputation of the Complainant’s mark.
The Panel also finds that, by using the Domain Name to promote the tyres of the Complainant and of its competitors, the Respondent intentionally attempted to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website and of the products on that website. Under paragraph 4(b)(iv) of the Policy, this constitutes evidence of both bad faith registration and bad faith use for the purposes of paragraph 4(a)(iii).
The fact that the website was and remains deactivated following the Complainant’s cease-and-desist letter, while the Respondent continues to hold the Domain Name which he registered and previously used in bad faith does not, in all the circumstances, lead to the conclusion that the Respondent’s current use is no longer bad faith use. Even assuming the present use to be in good faith, the alternative requirements of paragraph 4(a)(iii) that the Domain Name “has been registered or has subsequently been used in bad faith” are satisfied in this case both as regards registration and as regards subsequent bad faith use.
The Complainant has established this element.
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 <michelin.net.au> be transferred to the Complainant.
Alan L. Limbury
Date: January 17, 2018