WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. JH Kang

Case No. DCO2021-0073

1. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Tmark Conseils, France.

The Respondent is JH Kang, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <michilin.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 September 17, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 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 September 24, 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 September 27, 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 September 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2021.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on October 28, 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 was founded in 1889 and is a globally operating company in the field of tire manufacturing for vehicles and in the field of publications for the travel and gastronomy sector, including the “Guide Michelin”, a guide on the ranking of fine dining establishments by awarding “Michelin Stars”.

The Complainant is the owner of numerous trademark registrations for MICHELIN for various goods and services, including the following registrations:

The Complainant also owns the domain name “michelin.com”, registered on December 1, 1993, and the sub-domain “guide.michelin.com”.

The Complainant uses the website under the aforementioned domain name and sub-domain to promote and sell its goods and services.

In addition, the Complainant is the owner of the corporate name “Compagnie Generale Des Etablissements Michelin” registered in the Commerce Register in France since July 1, 1955, under the registration No. 855 200 887.

According to the WhoIs excerpt provided in Annex 1 to the Complaint, the disputed domain name <michilin.co> was registered on November 30, 2020. At the time of filing the Complaint, the disputed domain name resolved to a site hosting pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

First, the Complainant argues that the disputed domain name <michilin.co> is confusingly similar to the Complainant’s earlier well-known MICHELIN trademarks, domain names, and corporate name.

In this regard, the Complainant claims that the trademark MICHELIN enjoys a strong reputation for the abovementioned fields of business (manufacturing of tires and publication of travel and gastronomy guides). To support its argument, the Complainant refers to numerous previous panel decisions and provides extensive history of use.

The Complainant further contends that the disputed domain name almost identically contains the Complainant’s MICHELIN mark. The replacement of the letter “e” by the letter “i” in the disputed domain name constitutes a typical typosquatting variation of the Complainant’s mark. Further, the addition of the country code Top-Level Domain (“ccTLD”) “.co” is considered a purely technical element and thus not distinctive. Hence, the differences are almost imperceptible and do not eliminate the confusing similarity.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is the sole legitimate owner of the trademarks, corporate name, and domain names consisting of and/or including the term “michelin”. It has not authorized the Respondent to use the MICHELIN mark. The Complainant contends that the Respondent has no legitimate interests to use the disputed domain name as it constitutes a case of typosquatting.

Finally, the Complainant claims that the disputed domain name has been registered and is being used in bad faith.

It argues that, due to the well-known and distinctive character and reputation of the mark MICHELIN, the Respondent must have been aware of the Complainant and its brand when registering the disputed domain name. The Complainant contends that as part of a typosquatting scheme, the disputed domain name was intentionally registered to appear confusingly similar to the Complainant’s MICHELIN mark and thus, was registered in bad faith.

The Complainant further argues that the Respondent’s use of the disputed domain name was intended to draw the internet users’ attention to the Respondent’s website, which is a parking website of commercial links relating to the Complainant’s business in the restaurant/gastronomy and tires sector. The Complainant further contends that by the practice of typosquatting, the Respondent is deliberately taking undue advantage of the Complainant’s trademarks to attract consumers and more generally to generate own profits through PPC advertisements/hyperlinks.

Moreover, the Complainant claims that an email server has been configured on the disputed domain name which enables the Respondent to use the disputed domain name for creating and using email addresses composed with the well-known MICHELIN trademark. Therefore, the use of the disputed domain name by the Respondent presents a significant risk that the Respondent could steal valuable information from the Complainant’s clients or employees.

B. Respondent

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

6. Discussion and Findings

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely 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 respect of the disputed domain name;

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to “[r]espond specifically to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain-name holder) to retain registration and use of the disputed domain name […]”.

In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case.

In the event of default, under the Rules, paragraph 14(b) “[…] the Panel shall draw such inferences therefore as it considers appropriate”. As stated by numerous UDRP panels (e.g., Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443), if the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the Complainant: “[…] in the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence.”

In the present administrative proceeding, the Respondent has chosen not to submit a response. The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as deems applicable.

A. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy, paragraph 4(a)(i) is limited in scope to a direct comparison between the Complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark MICHELIN which predate the registration of the disputed domain name. The disputed domain name consists of the term “michilin” plus the ccTLD “.co”.

The Panel finds that the disputed domain name is confusingly similar to the MICHELIN trademarks.

The disputed domain name almost identically contains the Complainant’s trademark MICHELIN. It only differs in the letter “i” instead of “e” and the gTLD.

The difference due to the replacement of the letter “e” by the letter “i” in the disputed domain name is likely to remain unobserved by the public visually as well as phonetically. UDRP panels have consistently held that a domain name which contains a common or obvious misspelling of a trademark usually will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (see Sanofi, Genzyme Corporation v. Domain Privacy, WIPO Case No. D2016-1193; LinkedIn Corporation v. Daphne Reynolds, WIPO Case No. D2015-1679; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302).

Such insignificant modifications to trademarks are commonly referred to as “typosquatting” or “typo-piracy”, as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser's location bar (seeExpress Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161 (April 17, 2003).

In light of the above, it is the Panel’s view that the replacing or exchanging of the letter “e” by the letter “i” in the disputed domain name is to be considered a common or obvious misspelling of the MICHELIN mark. In fact, taking into account that the letters “e” and “i” are vowels and phonetically highly similar, mixing up these letters is a common typing mistake.

Moreover, the ccTLD “.co” does not affect the confusing similarity in any way due to the fact that it is a standard registration requirement and as such is disregarded under the first element confusing similarity test, except where the applicable Top-Level suffix may itself form part of the relevant trademark, which is not the case here (see section 1.11 of the WIPO Overview 3.0; see also Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; G4S Plc v. Noman Burki, WIPO Case No. D2016-1383; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565).

Thus, the overall impression of the signs must be considered as confusingly similar in accordance to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In light of the material brought before the Panel, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1, and cases cited therein).

Paragraph 4(c) of the Policy contains, in particular but without limitation, circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(i) the 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 and services before any notice of the dispute;

(ii) being commonly known by the domain name; or

(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

There is no evidence that the Respondent was using or making demonstrable preparations to use the disputed domain name or a name corresponding to that name in connection with a bona fide offering of goods or services before its notice of the dispute. Nor is there any evidence that the Respondent is being commonly known by the disputed domain name.

The Complainant, on the other hand, has provided evidence that the Respondent is using the disputed domain name with the intent for commercial gain to misleadingly divert the Complainant’s customers. The website contains PPC hyperlinks to third-party websites featuring goods and services provided by the Complainant’s competitors in the restaurant/gastronomy and tires sector. These offers conflict with those genuinely offered by the Complainant under the brand MICHELIN. In the absence of the Complainant’s authorization to use the mark MICHELIN, the only inference is that the disputed domain name is intended to mislead customers into believing that they were dealing with the Complainant and thereby, to make commercial profit via click-through.

Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name.

Hence, the burden of production shifts to the Respondent. In such case, the Respondent must demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.

Consequently, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds also that the disputed domain name was registered and used by the Respondent in bad faith.

Under paragraph 4(a)(iii) of the Policy, the Complainant has to establish that the disputed domain name has been registered and is being used in bad faith by the Respondent.

Whether a domain name is used in bad faith for the purposes of the Policy may be determined by evaluating the factors set out under 4(b) of the Policy:

(i) circumstances indicating that the respondent has registered or the respondent 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 registrant’s documented out-of-pocket costs directly related to the domain name;

(ii) the respondent 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 respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, the respondent has 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 mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

However, the aforementioned provisions are without limitation and bad faith registration and use may be found otherwise, taking into account all circumstances relevant to the case (see Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421).

The Panel finds that the evidence in the case demonstrates that the Respondent registered and has used the disputed domain name in bad faith.

The Respondent registered a domain name which almost identically reproduces the Complainant’s famous trademarks while the differences are imperceptible.

The Complainant’s MICHELIN marks enjoy a high reputation in the field of tire manufacturing and publication in the travel and gastronomy sector. This has been confirmed by several panels (see Compagnie Générale des Etablissements Michelin v. Jon Cropper, Jonathan Media, WIPO Case No. D2020-1439; Compagnie Générale des Etablissements Michelin v. Way Su, WIPO Case No. D2016-2221; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; Compagnie Générale des Etablissements Michelin, Michelin & Cie v. Mitchell J. Newdelman, WIPO Case No. D2001-0512; Compagnie Générale des Etablissements Michelin v. Mark Hill, WIPO Case No. D2015-2274).

Moreover, the Complainant has demonstrated that even a simple search via Google reveals as the first search results the existence of the Complainant’s business and activity under the MICHELIN trademark. It would have been a small effort for the Respondent to conduct a trademark search or even a simple Internet search in order to establish the Complainant’s precedent rights in and to the MICHELIN trademark.

In view of the foregoing, it is inconceivable that at the time of the registration of the disputed domain name the Respondent was unaware of the MICHELIN name and trademarks.

Furthermore, the Complainant has presented evidence that the Respondent also uses the disputed domain name in bad faith.

Accordingly, the Respondent was, in all likelihood, trying to redirect traffic intended for the Complainant’s website to its own for commercial gain. It is apparent from the evidence submitted that the disputed domain name resolved into a website containing apparent PPC hyperlinks to third-party websites featuring goods and services provided by the Complainant’s competitors. Presumably, these websites are an income source via click-through for the Respondent (see Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi, WIPO Case No. D2017-0391).

With respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name, nor would such links ipso facto vest a respondent with rights or legitimate interests (see section 3.5 of the WIPO Overview 3.0; see also SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, should by itself prevent a finding of bad faith (see section 3.5 of the WIPO Overview 3.0). In the case at hand, there is no evidence of any of the factors outlined above which may have weighed in favour of the Respondent.

Lastly, the Complainant has provided evidence of active MX records through which the disputed domain name could potentially be used for sending and receiving emails, which presents a real or implied ongoing threat to the Complainant that further supports a finding of bad faith registration and use by the Respondent given the above circumstance and lack of plausible good-faith explanation.

In light of the above, the Panel concludes that the disputed domain name has been registered and is being used in bad faith, and that the Complainant has thus satisfied the third element of paragraph 4(a) 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, <michilin.co>, be transferred to the Complainant.

Andrea Jaeger-Lenz
Sole Panelist
Date: November 11, 2021