WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Mikhail Bulateckij

Case No. D2011-0473

1. The Parties

Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.

Respondent is Mikhail Bulateckij of Kiev, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <michelinua.com> is registered with Internet Invest, Ltd. dba Imena.ua (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2011. On March 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2011, 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 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2011. Respondent failed to formally answer the complaint. On March 28, 2011 Respondent sent e-mail communications in Russian stating that use of the disputed domain name as a primary domain name had ceased and that all traffic would be directed to a new domain name within 2-3 weeks, and asked whether additional actions should be taken to resolve the matter. In light of these communications, the Center sent an e-mail communication on April 1, 2011 inviting Complainant to consider suspending the proceedings in the interest of exploring a possible settlement between the parties. On April 5, 2011, Complainant advised that it wished to continue with the proceedings.

The Center appointed Clark W. Lackert as the sole panelist in this matter on April 28, 2011. 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.

Language of the proceeding

Paragraph 11 (a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. The language of the registration agreement for the disputed domain name is Russian. On March 21, 2011, the Center sent a language communication to both parties in both English and Russian. On March 22, 2011, Complainant requested that English be the language of the proceeding. In its language communication, the Center informed Respondent that if Respondent did not object by the due date to a language request by Complainant, the Center would proceed on the basis that Respondent did not object to Complainant’s request that English be the language of the proceeding. Respondent did not object. The Complaint was notified in the English and Russian languages and the Center also invited Respondent to submit a response in the English or Russian languages. In light of the above, the Panel decides that it is fair and equitable to both parties to proceed to render a decision in English.

4. Factual Background

Complainant Compagnie Générale des Etablissements Michelin is a French company which is in the automobile and tire manufacturing industry. Complainant uses its MICHELIN trademark on its passenger car and truck tires and other products such as hotel guides, restaurant guides, and road maps. Complainant has provided details of multiple trademark registrations for its MICHELIN trademark including WIPO International Registration Nos. 348615, 492879, and 816915 for MICHELIN covering classes 1, 6, 7, 8, 9, 12, 16, 17, 20, 35, 37, 39, and 42. Each of these registrations designates Ukraine, the country cited as Respondent’s nation of residence. Complainant has also provided evidence of ownership of the <michelin.ua> and <michelin.ru> domain names.

The disputed domain name <michelinua.com> was registered on January 28, 2009. The registrant of the domain name is identified as Mikhail Bulateckij, Respondent in this proceeding. The registrar for the disputed domain name is identified as Internet Invest, Ltd. d/b/a IMENA.UA. The content of the website associated with the disputed domain name at the time these proceedings commenced featured Complainant’s MICHELIN trademark, images of tires featuring Complainant’s MICHELIN trademark, and a caricature, appearing to be similar to Complainant’s character “Bibendum”, throwing a tire towards a small car being driven by a man.

Complainant sent a cease and desist letter to Respondent on September 14, 2009 via e-mail and post. Respondent did not answer these communications. Complainant proceeded to send follow-up communications to Respondent, who answered on October 15, 2009 via e-mail requesting that Complainant communicate in Russian. On January 4, 2010, Complainant sent a communication to Respondent in Ukrainian, the language of the nation cited as Respondent’s home country. Respondent did not answer this communication.

5. Parties’ Contentions

A. Complainant

Complainant states that the MICHELIN trademark is well-known worldwide. Complainant cites prior UDRP decisions which acknowledge that its trademark is well-known or famous, including Compagnie Générale des Etablissements Michelin v. Trending, WIPO Case No. D2010-0484, Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy/Transure Enterprise Ltd., WIPO Case No. D2010-2085; and Compagnie Générale des Etablissements Michelin (Michelin) v. BMtexnologiya MMC, Tural Malikov, WIPO Case No. D2010-2150. Complainant claims to have eight plants, five passenger car and light truck tire facilities, three truck facilities, three specialty tire facilities. Complainant also claims to have had over 11,000 employees in Eastern Europe as of December 31, 2009.

Complainant claims that its presence in Eastern Europe and around the world will cause the public to assume that the disputed domain name is owned by or related to Complainant because the disputed domain name incorporates Complainant’s MICHELIN trademark. Complainant cites the domain name’s composition of Complainant’s MICHELIN trademark and the abbreviation “ua” as misleading because users would be likely to believe that the site linked to the domain name is Complainant’s official Ukrainian website. Further, Complainant alleges that the pages previously featured at the disputed domain name had the potential to confuse users because they featured Complainant’s MICHELIN trademark and a caricature and colors associated with Complainant. Regarding the pages featured on the disputed domain name at the time these proceedings were initiated, Complainant maintains that the content was confusingly similar to Complainant’s official homepage and incorporated a link to a different website composed of one of Complainant’s competitor’s trademarks. Complainant maintains that no license or authorization of any kind has been granted to Respondent by Complainant for use of the MICHELIN trademark. Complainant also maintains that the well-known status of its trademark and the content featured on the disputed domain name are indicative of bad faith registration and use.

B. Respondent

Respondent did not submit a formal Response to the Complaint. On March 28, 2011 and April 1, 2011 Respondent sent e-mail communications in Russian stating that use of the disputed domain name as a primary domain had ceased and that all traffic would be directed to a new domain within 2-3 weeks. In these communications, Respondent requested confirmation regarding additional actions needed to resolve the matter.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name <michelinua.com> is confusingly similar to Complainant’s MICHELIN trademark in that Respondent adds only “ua” as a suffix. The Panel notes that the International Organization for Standardization (“ISO”) country code top level domain (ccTLD) abbreviations corresponding to the Ukraine are both “ua”. Given the association between the abbreviation “ua” and the Ukraine, the composition of a domain name using this abbreviation and a well-known trademark contributes to the likelihood that consumers will believe that the domain name is owned by, sponsored by, or otherwise affiliated with the trademark owner. The incorporation of an ISO or ccTLD abbreviation has been held in prior cases to be a non-distinctive element which does not avoid confusing similarity. See, e.g., eBay Inc. v. David Sach, WIPO Case No. D2009-1083 (holding that the incorporation of a country code is not enough to avoid the likelihood of confusion arising from use of the EBAY mark).

Moreover, the Panel notes that Complainant’s ownership of the <michelin.ua> domain name and use of this domain name to advertise products and services to its customers based in Russia and the Ukraine contributes to a finding of a likelihood of confusion. Specifically, there is a potential for customers seeking the products and services advertised at <michelin.ua> to arrive at the disputed domain name <michelinua.com> in error. The content of the disputed domain name does nothing to dispel a likelihood of confusion; on the contrary, the disputed domain name features Complainant’s MICHELIN trademark, and images of products sold by Complainant. This likelihood of confusion is further aggregated by the fact that the contact address and telephone number advertised on the disputed domain name are both Ukrainian, content which could potentially lead visitors to believe that the website is a Ukrainian representative of Complainant.

Based on the above, the Panel finds that Complainant has satisfied the requirements of paragraph 4(1)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant’s trademark rights in MICHELIN precede registration of the disputed domain name <michelinua.com>, which occurred on January 28, 2009. There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s MICHELIN trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term
“michelin”.

Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The record shows that Complainant has established trademark rights in MICHELIN in multiple jurisdictions including Respondent’s country of residence and that these rights have existed for decades. A review of prior decisions confirms Complainant’s claim that the MICHELIN trademark has been cited as a well-known and famous trademark. Specifically, the following cases have held that the MICHELIN trademark is famous or well-known as outlined below:

Compagnie Générale des Etablissements Michelin v. Trending, WIPO Case No. D2010-0484, acknowledges that the MICHELIN trademark is famous;

Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy/Transure Enterprise Ltd., WIPO Case No. D2010-2085 states that the “MICHELIN trademark is well known throughout the world“;

Compagnie Générale des Etablissements Michelin (Michelin) v. BMtexnologiya MMC, Tural Malikov, WIPO Case No. D2010-2150 states that “The Complainant has indicated that its trademark MICHELIN is well-known and the Panel agrees.“

Compagnie Générale des Etablissements Michelin v. Pavol Horecny, WIPO Case No. D2009-1554 acknowledges that the trademark MICHELIN is well-known; and

Compagnie Générale des Etablissements Michelin v. Geoacchino Zerbo, WIPO Case No. D2010-0865, acknowledges that the trademark MICHELIN is famous.

In certain circumstances, registration of a domain name incorporating a well-known trademark can constitute registration in bad faith due to the low likelihood that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., LEGO Juris A/S v. pcmaniabg, Paisiy Aleksandrov, WIPO Case No. D2010-1965. Given Complainant’s established trademark rights in MICHELIN, the Panel finds it implausible that Respondent was unaware of Complainant when registering the disputed domain name <michelinua.com>.

The prior and more recent content of the disputed domain name is also indicative of bad faith. Specifically, the webpages have featured Complainant’s MICHELIN trademark and images of tires, products sold by Complainant under the MICHELIN trademark. The record shows that many of these images featured Complainant’s MICHELIN trademark. Based on this content, Respondent is clearly aware of Complainant’s business and appears to have chosen the <michelinua.com> domain name in an effort to deceive customers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by Complainant, most probably the Ukrainian website for Complainant. The similarities between the disputed domain name <michelinua.com> and Complainant’s registered domain name <michelin.ua> only serve to aggravate the potential for confusion. Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts 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 the registrant’s website, such use constitutes evidence of bad faith registration and use. Continued use of the <michelinua.com> domain name contributes to the risk that consumers will mistakenly believe that the products featured at the disputed domain name are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <michelin.ua> domain name.

Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 domain name <michelinua.com> be cancelled as requested in the Complaint.

Clark W. Lackert
Sole Panelist
Dated: May 12, 2011