WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2018-0028
The Petitioner is Compagnie Générale des Etablissements Michelin of France, represented by Dreyfus & associés, France.
2. Domain Holders
The Domain Holders are P. I. and M. D., Tool Domains Ltd of Bulgaria (hereinafter referred to as “Domain Holder”).
3. Domain Names and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain names <michelinfleets.se> and <stinaomichelin.se> (“disputed domain names”).
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on May 16, 2018. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on June 21, 2018.
The Center appointed Petter Rindforth as the sole Arbitrator in this matter on July 18, 2018. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
4. Factual Background
The Petitioner, a tire company with its headquarters in France, is the owner of the trademark MICHELIN in a large number of countries around the world, including:
International Trademark (IR) registration No. 771031, MICHELIN (word)
Registered on June 11, 2001
Classes: 05, 07, 08, 09, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, 42
Covering 49 countries, including Sweden
European Union Trademark (EUTM) registration No. 007333834, MICHELIN (word)
Registered on May 14, 2009
Classes: 1, 8, 9, 11, 12, 16, 20, 21, 28
European Union Trademark (EUTM) registration No. 001791243 MICHELIN (word)
Registered on October 24, 2001
Classes: 6, 7, 12, 17, 28
The Domain Holders registered the disputed domain name <michelinfleets.se˃ on October 23, 2017, and the disputed domain name <stinaomichelin.se˃ on November 12, 2017.
The Arbitrator notes that the two disputed domain names are registered with different holders, and that the Petitioner has requested consolidation of the Domain Holders, based on the conclusion that the Domain Holders appear to be subject to common control.
In this respect, the Arbitrator, based on the information provided by the Petitioner, notes that although the Domain Holders have different postal addresses, and have used different Registrars to register the disputed domain names, both are active in the same company, Tool Domains Ltd, as “Co-Founder” and “Chief of Marketing and Research”, respectively, and that initial warning letters from the Petitioner to the Domain Holder/s have both and separately been replied by Tool Domains Ltd.
The Arbitrator concludes that
i) the disputed domain names are subject to common control, and
ii) the consolidation would be fair and equitable to all Parties.
The Arbitrator will therefore handle and refer to the two Domain Holders as closely connected to each other, basically being the same as one Domain Holder, and referring to them as “the Domain Holder”. SeeSpeedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
The Petitioner has requested that the disputed domain names shall be transferred to the Petitioner, Compagnie Générale des Etablissements Michelin.
6. Parties’ Contentions
The Petitioner states that the disputed domain name <michelinfleets.se> includes the famous MICHELIN trademark, with the addition of the generic term “fleets”, which directly refers to the Petitioners field of activity – as the term “fleets” can be defined as a number of vehicles under the control of one person or organization.
The Petitioner further states that the disputed domain name <stinaomichelin.se> includes the famous MICHELIN trademark, with the addition adjunction of the term “stinao”, meaning that the disputed domain name consists of a well-known trademark that stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
The disputed domain names were resolving toward a parking page displaying sponsored links related to tires, and notably those of the Petitioner.
The Petitioner has sent Cease and Desist letters to the Domain Holders, which were replied to by a person at the company founded by one Domain Holder, and which in those replies proposed to transfer the disputed domain names in exchange of a monetary compensation.
According to the Petitioner, the Petitioner has used the trademark MICHELIN in connection with a wide variety of products and services around the world. Consequently, the public has learned to perceive the goods and services offered under this trademark as being those of the Petitioner. Therefore, the public would reasonably assume that the disputed domain names would be owned by the Petitioner or at least assume that they are related to the Petitioner. Furthermore, the term MICHELIN is so unique and is only known in relation to the Petitioner. It has no meaning in English or in any other language, except in relation to the Petitioner.
According to the Petitioner, the disputed domain names <michelinfleets.se> and <stinaomichelin.se> are registered and used in bad faith. The Domain Holder has no license or permission from the Petitioner to use the Petitioner’s trademarks, and no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed.
Also, knowledge of a corresponding trademark by the Domain Holder, at the time of the disputed domain names registration suggests bad faith.
Several Panels have previously mentioned the Petitioner’s worldwide reputation, making it unlikely that the Domain Holder was not aware of the Petitioner’s proprietary rights in the trademark.
The Domain Holder is not making any legitimate noncommercial or fair use of the disputed domain names as they were used in connexion with a parking page, and such use can be considered as bad faith. Indeed, the disputed domain names were leading to a website with pay-per-click ads which are likely to generate revenues. It thus clearly appears that the disputed domain names were registered and are used in order to benefit from the fame of the Petitioner’s trademark.
Additionally, it appears that the Domain Holder might be engaged in a cybersquatting activity since the Domain Holder has registered several domain names. Some of these domain names abusively reproduce famous trademarks. These domain names reflect a pattern of conduct from the Domain Holder as these domain names represent imitation of third parties’ trademarks.
It is more likely than not, that the Domain Holder’s primary motive in registering and using the disputed domain names was to capitalize on or otherwise take advantage of the Petitioner’ trademark rights, through the creation of initial interest confusion.
Finally, the Petitioner states that the Domain Holder has no rights or justified interests in the disputed domain names, as the Domain Holder is identified as P. I. and M. D. with no name relationship with MICHELIN. The Domain Holder is not affiliated with the Petitioner in any way nor has he been authorized by Petitioner to use and register its trademark or trade name, or to seek registration of any domain name incorporating said mark or trade name.
Also, in the Domain Holders reply to the Petitioner, via the company Tool Domains, it was said that they unintentionally registered the domain names and that they own a large number of domain names (“400,000+” or “500,000+”) for the purpose of selling them. It proves the Domain Holder has no legitimate interest in the disputed domain names, since its purpose is to benefit from the sale of these domain names, fitted with the notoriety of the MICHELIN trademarks.
B. Domain Holder
The Domain Holder has not filed a response.
7. Discussion and Findings
A domain name may, in accordance with .SE’s Terms and Conditions of Registration (.se Policy) paragraph 7.2, be deregistered or transferred to the party requesting dispute resolution proceedings if all of the following three conditions are fulfilled:
1. The Domain Name is identical or similar to a trademark or business name (or other name rights) which is legally binding in Sweden and to which the party requesting dispute resolution can prove its rights, and
2. The Domain Name has been registered or used in bad faith, and
3. The Domain Holder has no rights or justified interest in the Domain Name.
All three conditions must be met in order for a Petitioner to succeed in his action.
A. The Domain Names are identical or similar to a name which is legally binding in Sweden and to which the Petitioner can prove its rights
The Petitioner is the owner of the well-known trademark MICHELIN, registered and valid in Sweden by
IR No. 771031, MICHELIN (word), EUTM No. 007333834, MICHELIN (word), and EUTM No. 001791243 MICHELIN (word).
The relevant parts of the disputed domain names are <michelinfleets> and <stinaomichelin>, as the addition of the country code Top-Level Domain (“ccTLD”) “.se” is insufficient to distinguish a disputed domain name from a name right claimed by a petitioner.
The addition of the descriptive word “fleets” in <michelinfleets> is not enough to create a word/domain name that differs enough from the trademark MICHELIN to avoid similarity. Further, according to the Oxford dictionary, the word “fleets” refers to “a number of vehicles or aircraft operating together or under the same ownership”, which in fact clearly refers to the goods offered by the Petitioner.
The addition of “stinao” makes no sense to some Internet users, and thereby have no distinctive effect that is enough to differ <stinaomichelin> from the trademark MICHELIN to avoid similarity. In the way “stinao” may be considered to have a specific reference/meaning, it is however closely related to the Petitioner’s trademark MICHELIN for some local Swedish Internet users, as further described in point B. below.
The Arbitrator concludes that the disputed domain names are similar to the Petitioner’s trademark MICHELIN.
B. The Domain Names have been registered or used in bad faith
As noted above, the Petitioner’s trademark MICHELIN is well-known and registered since many years in countries like Sweden, as well as the Domain Holder’s home country Bulgaria (through IR No. 771031, registered 2001).
The Domain Holder registered the disputed domain name <michelinfleets.se˃ on October 23, 2017, and the disputed domain name <stinaomichelin.se˃ on November 12, 2017.
The Domain Holder must have known about the Petitioner’s prior rights in the trademark MICHELIN at the date of registration of the disputed domain names.
As stated above, the addition of “fleets” is a further reference to the Petitioner’s goods and services.
The Arbitrator notes that the disputed domain name <stinaomichelin.se˃ was registered on November 12, 2017. It is commonly known in Sweden, as it was well observed in Swedish media, that the Petitioner decided to sponsor the Swedish Ski Association for the 2017/2018 winter season. A well-known member and skier of the Swedish Ski Association is Ms. Stina Nilsson, a Swedish cross country skier. The addition of “stinao” may not have a meaning for some Internet users, but the fact that the disputed domain name is registered under the Swedish ccTLD “.se”, and just a couple of weeks before the Swedish ski season started, may well indicate that the “stinao” part – where “o” is the Swedish synonym for “and” (“och”) - refers to “Stina and Michelin” (the Petitioner’s sponsoring of, among other Swedish professional skiers, Ms. Stina Nilsson).
The above are clear indications that the Domain Holder has registered the disputed domain names in bad faith.
Further, both disputed domain names have been used in connection with websites with pay-per-click ads, thereby misusing the Petitioners prior rights to the well-known trademark MICHELIN.
Finally, the Domain Holder refused to transfer the disputed domain names to the Petitioner without “administrative payment”.
The Arbitrator concludes that both disputed domain names <michelinfleets.se> and <stinaomichelin.se> have been registered and are used in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Names.
By not submitting a Response, the Domain Holder failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the disputed domain names.
It is obvious that the Petitioner has not provided the Domain Holder any rights to register and/or use the trademark MICHELIN as parts of domain names.
The Domain Holder’s use of the disputed domain names<michelinfleets.se> and <stinaomichelin.se> to connect them to pay-per-click ads, some directly related to the Petitioner’s goods and services, and then to claim monetary compensation for the transfer of these domain names to the Petitioner, does not constitute justified interest.
The Arbitrator concludes that the Domain Holder has no rights or justified interest in the disputed domain names <michelinfleets.se> and <stinaomichelin.se>.
The disputed domain names <michelinfleets.se> and <stinaomichelin.se> shall be transferred to the Petitioner.
The disputed domain names are similar to the Petitioner’s valid trademark MICHELIN, registered in Sweden and the European Union.
The disputed domain names consist of the Petitioner’s trademark, with the addition of descriptive words that refer to the Petitioner’s goods, services and activities.
The disputed domain names have been used for pay-per-click websites, and the Domain Holder refused to transfer the disputed domain names to the Petitioner without payment of an “administrative cost”.
Date: July 30, 2018