WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Abdulla Zainal
Case No. DQA2016-0001
1. The Parties
Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Abdulla Zainal of Doha, Qatar.
2. The Domain Name and Registrar
The disputed domain name <michelin.qa> is registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Qatar Domains Registry Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Qatar Domains Registry Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Qatar Domains Registry Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 18, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 9, 2016.
The Center appointed Roberto Bianchi as the sole panelist in this matter on November 15, 2016. 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
Complainant is a leading tire company with headquarters in Clermont-Ferrand, France. It manufactures and markets tires for airplanes, automobiles, bicycles/motorcycles, earthmovers, farm equipment and trucks, etcetera. Complainant also offers electronic mobility support services on ViaMichelin.com and publishes travel guides, hotel and restaurant guides, maps and road atlases. Complainant has presence in over 170 countries, has 112,300 employees and operates 68 production plants in 17 different countries.
Complainant owns trademark registrations for MICHELIN in numerous countries. In Qatar, Complainant owns the following trademark registrations:
- MICHELIN, Registration No. 1094, Registration Date August 4, 1985, filed on March 28, 1981 (duly renewed), covering goods in International Classes 6, 7 and 8;
- MICHELIN, Registration No. 1095, Registration Date August 4, 1985, filed on March 28, 1981, (duly renewed), covering goods in International Classes 9, 12 and 16;
- MICHELIN, Registration No. 11490, Registration Date May 9, 2001, filed on December 28, 1993 (duly renewed), covering services in International Class 12.
Complainant also owns and operates the <michelin.com> domain name, registered on December 1, 1993.
On June 7, 2016, Respondent registered the disputed domain name.
On July 11, 2016, Complainant sent a cease-and-desist letter to Respondent. Following this communication, there was an exchange of messages between the Parties, but no agreement resulted from this exchange.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name is identical to Complainant’s trademark MICHELIN. The disputed domain name substantially reproduces Complainant’s trademark in its entirety, which previous panels have considered to be “well known” or “famous”. In addition, the disputed domain name is virtually identical to Complainant’s domain name <michelin.com>, which results to diversion from Complainant’s site to that of Respondent.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant in any way nor has he been authorized by Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said trademarks. Furthermore, Respondent has no prior rights or legitimate interests in the domain name. The registration of the MICHELIN trademark preceded the registration of the disputed domain name for years. In previous UDRP decisions, panels found that in the absence of any license or permission from the complainant to use widely known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. Since the disputed domain name in dispute is identical to the famous MICHELINtrademark of Complainant, Respondent cannot reasonably pretend it wasintending to develop a legitimate activity through the disputed domain name.
Respondent did not demonstrate any use of, or demonstrablepreparations to use, the disputed domain name in connection with a bona fide offering ofgoods or services. Indeed, the disputed domain name used to resolve to aparking page displaying commercial links. Some of these links are related toautomotive products and/or services, including tires and notably, those ofComplainant and its competitors. Likewise, the disputed domain name used to direct Internet users to a parkingpage with a pay-per-click scheme likely to generate revenues. Hence, it cannot be inferred that Respondent was making a legitimatenoncommercial or fair use of disputed domain name.
After receiving Complainant’s cease and desist letter, Respondent has changed the content of its website and the disputed domain name started to direct towards a blog of WordPress, which apparently displays a form of disclaimer claiming that it has no link with Michelin but claiming Respondent is acting in good faith and intends to enter in a partnership with Michelin in Qatar. Contrary to what Respondent claimed in response to Complainant’s cease-and-desist letter, there is no offer of any Michelin’s products on this website. Respondent is making a non-legitimate use of the domain name, with intent for commercial gain to misleadingly divert consumers from Complainant’s official websites or partners. It appears that Respondent intends to use Complainant’s trademark to lure Internet users who might believe he is an authorized agent of Complainant. This does not correspond to a legitimate use under the Policy. Although Respondent pretends to use the disputed domain name to commercialize Complainant’s products, legitimate interests are normally recognized only if the following requirements are met (Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903):
- The registrant must provide goods and services through the domain name;
- The domain name must be used to commercialize only the goods and services offered by the brand reproduced in the domain name;
- The registrant must notify any risk of confusion by specifying that he is not the owner of the reproduced trademark; and
- The registrant must not prevent the trademark owner to use its trademark within the domain name.
For all of the above reasons, Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name has been registered and is being used in bad faith. It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name. Firstly, Complainant is well known throughout the world including Qatar – the home country of Respondent. Secondly, several panels have previously mentioned Complainant’s worldwide reputation, making it unlikely that Respondent was not aware of Complainant’s proprietary rights in the trademark. Thirdly, the message posted on Respondent’s blog about his intention of commercializing Complainant’s products clearly shows that he is aware of Complainant and its activities at time of the registration of the domain name in dispute. In view of the above circumstances, there is no doubt concerning Respondent’s knowledge of the existence of Complainant, its trademark and activities at the time of the registration of the disputed domain name <michelin.qa>.
In fact, bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. Given the reputation of the MICHELIN trademark, registration in bad faith can be inferred.
Under Section 2 of the Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. Thus, it was Respondent’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party. In the same vein, according to Qatar Domains Registry’s Domain Name Registration Policy: “The granting of a Domain Name license does not itself rise to any intellectual property or rights in the name that is subject of the Domain Name License, or any part of the Domain Name. It is the Applicant’s responsibility to ensure that it has the right to use the Domain Name and that the Registration or use of the Domain Name does not violate any third party intellectual property rights or their rights, does not defame any person and does not contravene any applicable laws of the State of Qatar”. Respondent’s bad faith is further highlighted by the fact that at first he has pretended not to know Complainant and its activities since he is in Qatar. Afterwards, he builds up a new page on which he posts in letter form a disclaimer and his intention to start a partnership with Complainant within the territories of Qatar, thereby implicitly admitting that he has no relationship or authorization by Complainant to use or commercialize its trademark as well as his excellent knowledge of the “GENUINE AUTO PARTS from MICHELIN”.
Previous panels have considered that in the absence of any license or permission from the complainant to use a widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Alstom, Bouygues v. Webmaster; WIPO Case No. D2000-0055, Guerlain S.A. v. Peikang, WIPO Case No. D2008-0281. Where as in the present case the disputed domain name is confusingly similar to the complainant’s trademark, previous panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site” (MasterCard International Incorporated (“MasterCard”) v. Wavepass AS, WIPO Case No. D2012-1765, Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095).
The disputed domain name previously resolved to a parking page displaying sponsored links related to Complainant’s field of activity such as “Michelin tire Rebates”, “Pneu Michelin”, among others. UDRP panels have held that the use of domain names to divert Internet users and direct them to a webpage providing click-through revenues to the respondent evidences bad faith. Indeed, Respondent is taking undue advantage of Complainant’s trademark to generate profits. The use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the Policy. In addition, there is no indication of Respondent’s own activities on the aforementioned site. The clear inference to be drawn from Respondent’s operations is that he is trying to benefit from the fame of Complainant’s marks. It is more likely than not that Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of Complainant’s trademark rights, through the creation of initial interest confusion.
Finally, it is likely that Respondent registered the disputed domain name to prevent Complainant from using its trademark in the disputed domain name. According to prior panels, this type of conduct constitutes evidence of Respondent’s bad faith. Consequently, it is established that Respondent registered and/or used the disputed domain name in bad faith.
Respondent did not reply to Complainant`s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
By submitting printouts of its trademark registrations in Qatar, Complainant has shown to the satisfaction of the Panel that it has rights in the MICHELIN trademark. See section 4 above.
The Panel notes that the disputed domain name exclusively consists of the “Michelin” term, just adding the country-code Top-Level Domain “.qa”. Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s MICHELIN mark. Thus, the first requirement of paragraph 5(a) of the Policy is met.
B. Rights or Legitimate Interests
Complainant contends that Respondent is not affiliated with Complainant in any way nor has it been authorized to use and register Complainant’s trademarks, or to seek registration of any domain name incorporating said trademarks. Furthermore, the registration of the MICHELIN trademark preceded the registration of the disputed domain name for years. Since the disputed domain name in dispute is identical to the famous MICHELINtrademark of Complainant, Respondent cannot reasonably pretend it wasintending to develop a legitimate activity through the disputed domain name.Complainant adds that the disputed domain name used to resolve to aparking page displaying commercial links related toautomotive products and/or services, including tires and notably, those ofComplainant and its competitors. In addition, the disputed domain name used to direct Internet users to a parkingpage with a pay-per-click scheme likely to generate revenues. Hence, Respondent was not making a legitimatenoncommercial or fair use of disputed domain name.
The Panel believes that the existing evidence supports Complainant’s contentions. In particular, Complainant has shown that the disputed domain name formerly resolved to a parking page displaying sponsored or related links referring to Complainant`s products and services, such as “Michelin tire Rebates”, “Prix des pneumatiques Michelin”, “Pneu Michelin”, “Vente pneu pas cher”, “Michelin Tyres”, “Pneu 4 x4 225 55 r16”, “Michelin Pneu 205 45 r17”, “Michelin moto”, “Pneu pas chère” etcetera. The Panel agrees with Complainant that such links most likely generate pay-per-click income, which is neither a bona fide use under Policy, paragraph 5(c)(i) nor a fair, legitimate noncommercial use of the disputed domain name under Policy, paragraph 5(c)(iii).
Presently, a text entitled “Disclaimer” is posted on the website at the disputed domain name, stating, “selling authentic, new and genuine MICHELIN as a certified and accredited company in good faith to a wider audience is fair use, benefits the MICHELIN bottom line and does not delude the company’s image by selling its products to a wider audience”. Aside from this somewhat vague statement, the Panel notes that Respondent failed to provide any evidence that it actually complied with any of criteria reflected in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3. (“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant’s relationship with the trademark holder.”)
The Panel further notes that the “disclaimer” is signed “Owner Abdulla”, and that according to the corresponding WhoIs database, the name of Respondent is “Abdulla Zainal”. This means that Policy, paragraph 5(c)(ii) must also be discarded.
Complainant also has shown that in this “disclaimer” Respondent states that he is not associated with or is a part of Complainant, that he has invested in buying the disputed domain name to sell new, original, genuine and authentic MICHELIN products from the authorized dealers, and that he intends to become “a certified Michelin auto-parts and services company in the near future”. Complainant denies that it has authorized Respondent to register the disputed domain name, or that it has granted Respondent a dealership or distributorship. There being no evidence to the opposite, the Panel concludes that Respondent’s “disclaimer” and statement of intent is insufficient to prove rights or legitimate interests. Otherwise, any unauthorized registration of a third party’s mark as a domain name would be “legitimized” by the registrant by simply stating it intends to become an authorized dealer in the future. In particular, there is no evidence that Respondent has ever sold any products or services on its website, or that Respondent has ever made any demonstrable preparations to do so in the future. In the Panel’s view, a mere statement of intent cannot replace effective use or demonstrable preparations pursuant Policy, paragraph 4(c)(i). As to the “investment” purportedly made by Respondent, there is no evidence indicating that it was more than the mere registration of the disputed domain name. See Wal-Mart Stores, Inc. v. Kenneth E. Crews, WIPO Case No. D2000-0580 (“If mere registration of a domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in the disputed domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy”).
In absence of any evidence in favor of Respondent, the Panel concludes that Complainant has made out its case that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered or Used in Bad Faith
The Panel agrees with prior panels that the MICHELIN trademark is well known or famous worldwide in respect of automobile tires, tourist guides and other goods and services. See Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev, WIPO Case No. D2012-0384 (“Given the fact the Complainant’s trademark is famous and known worldwide and in the absence of evidence to the contrary, the Panel is persuaded that Respondent knew of or should have known of the Complainant’s trademark and services at the time Respondent registered the disputed domain name…”); see also Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy, WIPO Case No. D2012-0045 (“Complainant was well known for its MICHELIN guide books on gastronomy”).
Also, Complainant has shown that its registrations for the MICHELIN mark in Qatar – Respondent’s country of domicile – predate the registration of the disputed domain name by several years. See section 4 above.
Further, the content of the website at the disputed domain name indicate that Respondent was aware of and targeted Complainant and its renowned MICHELIN trademark at the time of registering the disputed domain name. See the “disclaimer” in letterform posted until presently on the website at the disputed domain name, stating inter alia that MICHELIN is a “respectable and established global brand”. Lastly, Respondent did not deny that it knew of Complainant at the time of the domain name registration. In the Panel’s view, these circumstances together indicate that the registration of the disputed domain name was in bad faith.
Since Policy, paragraph 5(a)(iii) requires that the complainant must prove either registration in bad faith or use in bad faith, the Panel concludes that the third requirement of the Policy is also met. In any case, Complainant also has proved bad faith use, since it has shown that the disputed domain name formerly used to redirect Internet visitors presumably looking for Complainant and its MICHELIN products to links related to Complainant’s products and to competitors’ products as well, presumably generating click-through income for Respondent. In the Panel’s view, this is evidence that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location, which is a circumstance of registration and use on bad faith of the disputed domain name under Policy, paragraph 5(b)(iv).
For the foregoing reasons, in accordance with paragraphs 5(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <michelin.qa> be transferred to Complainant.
Date: November 29, 2016