WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Sarah Hampton
Case No. DCO2020-0084
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Tmark Conseils, France.
The Respondent is Sarah Hampton, United States of America (“United States” and “U.S.”).
2. The Domain Name and Registrar
The disputed domain name <bfgoodrichtire.co> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2020. On November 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2020, 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 November 16, 2020 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 November 16, 2020.
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 November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2020.
The Center appointed Martin Michaus Romero as the sole panelist in this matter on December 18, 2020. 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 one of the leading tires manufacturing companies and has been producing tires since 1896. The Complainant is present in 170 countries has more than 100,000 employees and operates 68 production facilities in 70 countries.
The Complainant has 150 years reputation built on extrema performance toughness and durability. In the earlies 1900 provided the tires for the first car to cross North American Continent from the East to West. It developed the first tubeless tire from the US Market in 1947 and 1965 was one of the first companies to produce radial tires on the American market.
In 1990, the Complainant acquired “The Uniroyal Goodrich Tires Company” and its owner of a worldwide portfolio of registered trademarks BFGOODRICH. In particularly owns:
a) Colombian Trademark Registration BFGOODRICH, No. 293169, filed on July 14, 2004 and registered on February 12, 2005;
b) United States Trademark Registration BFGOODRICH , No. 1,087,694, registered on April 25, 1977 and registered on March 21, 1978;
c) French Trademark registration BFGOODRICH, No. 3447866 filed and registered on August 29, 2006.
The worldwide reputation of the trademark BFGOODDICH has been recognized in previous UDRP decisions and in particularly Michelin Recherche et Technique S.A. v. Wang, WIPO Case No. DCC2016-0001 regarding the disputed domain names <bfgoodrich.cc> and <bdfoorichtires.cc>. See also Compagnie Generale des Etablissements Michelin, Michelin et Cie, Michelin Recherche et Technique S.A. v. Alvaro Collazo, WIPO Case No. D2004-1095 concerning the disputed domain names <bfgoorichtires.co> and <www.bfgoodrichtires.co>; Compagnie Générale des Etablissements Michelin v. Registration Private, Trustcor Systems S. De R.L., WIPO Case No. D2018-1096 concerning the disputed domain name <bfgoodrichpromotions.net>.
It has registered the Trademark, Company name and domain names in numerous countries around the world. The filing date of the oldest registered trademark for BFGOODRICH was registered on January 7, 1986 in U.S.
The Complainant has registered and used various domain names incorporation the famous mark BFGOODRICH, such as <bfgoodrich.com>, registered on August 15, 1996 and <bfgoodrichtires.com>. registered on June 19, 1997.
The disputed domain name <bfgoodrichtire.co> was registered on July 31, 2020 and resolves to a registrar parking page with pay-per-click (“PPC”) links.
5. Parties’ Contentions
The Complainant states in its Complaint that the Respondent:
1) Registered the disputed domain name which is identical to the Complainant’s well-known trademark BFGOODRICH without the Complainant’s knowledge or authorization.
2) Registered the disputed domain name to create confusion amongst Internet users, that the disputed domain name is affiliated with the Complainant;
3) Has no rights or legitimate interests in the disputed domain name; and
4) Likely intended to confuse the Complainant’s customers or potential customers, considering the complete reproduction of the BFGOODRICH trademark in the disputed domain name.
Accordingly, the disputed domain name was selected, registered, and used by the Respondent in bad faith and not for a bona fide offering of goods or services, nor any fair use, but rather to mislead Internet users, disrupt the Complainant’s business, and affect the reputation or notoriety of the BFGOODRICH trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Considering that the Respondent did not reply to the Complainant’s contentions, in order to determine whether the Complainant has met its burden as stated in paragraph 4(a) of the Policy, the Panel bases its Decision on the statements and documents submitted and in accordance with the Policy and the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted evidence of its rights in the BFGOODRICH trademark.
The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name <bfgoodrichtire.co> reproduces the Complainant’s trademark in its entirety with the addition of the word “tire”.
The word “tire” has no effect on the overall impression of the dominant part of the disputed domain name: “tire” is a dictionary term that is commonly both in the commercial world and in everyday life. The term “tire” refers to the products of the Complainant and the field of activity in which the Complainant operates.
The BFGOODRICH trademark is also recognizable within the disputed domain name <bfgoodrichtire.co>.
The country code Top-Level-Domain (“ccTLD”) suffix, “.co”, should be disregarded for the purposes of the confusing similarity test. According to section 1.11.1 of the WIPO Overview of WIPO Panel views on selected UDRP questions, third edition (the WIPO Overview 3.0), the ccTLD, “.co” does not prevent a finding of confusing similarity between the disputed domain name and the BFGOODRICH trademark.
The Panel finds that the Complainant satisfies paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not received permission or authorization to use the Complainant’s trademark. The Respondent did not substantively reply to the Complainant’s contentions, and therefore has not provided any evidence to demonstrate the contrary. It should be pointed out that nothing in the available record indicates that the Respondent is an individual, business, or corporation known by the name “bfgoodrich”. Furthermore, the Respondent is not using the disputed domain name for a bona fide offering of good or services, nor for a legitimate noncommercial or fair use that might give rise to rights or legitimate interests in the disputed domain name.
There is no evidence that the Respondent is commonly known by the disputed domain name, has made demonstrable preparation to use it for a bona fide offering of good or services, owned a trademark or is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. Accordingly, the Panel finds that the Complainant satisfies paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to the evidence submitted by the Complainant, it is clear to the Panel that the registration and the use of the disputed domain name has been in bad faith, by including the BFGOODRICH trademark, to intentionally attract Internet users for commercial gain. The inclusion of the ccTLD “.co” in the disputed domain name attempts to deceive or lead Internet users to believe that the disputed domain name is operated by the Complainant.
The Panel finds that the disputed domain name was registered and is being used in bad faith due to the following:
1) According to the WhoIs details, the disputed domain name was registered on July 31, 2020.
The Complainant’s trademarks were registered way before that date. The disputed domain name was registered in 2020, thirty years after the Complainant’s the US trademark was filed. The disputed domain name was registered without authorization as the Complainant did not grant the Respondent any authorization to use its trademark in a domain name.
2) The previous and current use of the disputed domain name was deliberately conducted to take advantage of the reputation of the business activities of the Complainant and goodwill of its trademark. The Panel is of the opinion that at the time the disputed domain name was registered, the Respondent must have been aware of the existence of the Complainant’s BFGOODRICH trademark.
3) The Respondent has demonstrated, by registering the disputed domain name, which reproduces the Complainant’s trademark, an intent to capitalize on the goodwill of the Complainant’s trademark.
Furthermore, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s BFGOODRICH trademark. As it was shown through screenshots that disputed domain name initially directed to a parking page displaying commercial links relating to tires’ business that reveals the intent of the Respondent to take unfair advantage of the Complainant well-known trademarks through pay-per-click advertisement related to Complainant’s business.
4) The above-mentioned activities, as well as the Respondent’s default constitute, in view of the Panel, a clear evidence of registration and use of the disputed domain name in bad faith.
In view of the above the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(iv) of the Policy.
The Panel finds that the Complainant satisfies paragraph 4(a)(iii) 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, <bfgoodrichtire.co>, be transferred to the Complainant
Martin Michaus Romero
Date: December 21, 2020