WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin (Michelin) v. Todoneumatico Online S L

Case No. D2013-1383

1. The Parties

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

The Respondent is Todoneumatico Online S L of Seville, Spain.

2. The Domain Name and Registrar

The disputed domain name <neumaticos-michelin.com> is registered with Click Registrar, Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2013. On August 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and disclosing registrant and contact information for the disputed domain name.

The Center verified that the 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 the Respondent of the Complaint and the proceedings commenced on August 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2013.

The Center appointed Antony Gold as the sole panelist in this matter on September 20, 2013. 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 owns tyre manufacturing facilities in many jurisdictions and is also involved in the publication of hotel and restaurant guides and maps. It has marketing operations in more than 170 countries and employs 113,400 employees. It owns and operates various websites including “www.michelin.es” and “www.michelin.com”.

The Complainant has registered the trade mark MICHELIN in a large number of classes and jurisdictions including Community trade mark number 0048366359 dated January 4, 2006 for MICHELIN which is registered in 21 classes.

The Respondent is located in Seville, Spain. It is a reseller of tires, including the Complainant’s tires. It registered the disputed domain name on September 16, 2010. The Complainant has sought, without success, to secure a voluntary transfer to it of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that;

(1) The disputed domain name is identical or confusingly similar to a trade mark in which it has rights.

In support of this contention the Complainant explains that previous panels in UDRP proceedings in which it has been a Complainant have considered its trade mark MICHELIN to be famous and that it may be sufficient for the incorporation of its trade mark in its entirety into a domain name to establish that the disputed domain name is identical or confusingly similar to the trade mark.

The Complainant submits that, even if that is not the case, the addition of the generic and descriptive term “neumaticos” (the Spanish word for “tires”) to its trade mark does not render the disputed domain name dissimilar or unlikely to confuse as it will lead the Complainant’s customers to believe that the disputed domain name directs towards one of the Complainant’s websites. The Complainant refers to various decisions in which Panels have determined that the addition of a generic and descriptive term such as “neumaticos” to a trade mark does not reduce the similarity between the trade mark and the domain name. The Complainant says that the public would reasonably assume that the disputed domain name was owned by the Complainant and that any business conducted through a website to which the disputed domain name pointed was related to the Complainant.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant says that whilst the Respondent is a reseller of the Complainant’s products, it has never been authorized to use its trade mark or to seek registration of any domain name incorporating its mark. In this respect, the Complainant refers to the decision in, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which sets out a number of principles which can be used for determining whether a reseller of a complainant’s products should be regarded as having a legitimate interest in registering a domain name which incorporates the complainant’s trade mark. These include that the respondent should actually be offering the complainant’s goods or services via the website attached to the disputed domain name, that the respondent must use the site to sell only the trade marked goods, that the site must accurately disclose the respondent’s relationship with the trade mark owner and that the respondent should not try to corner the market in domain names which incorporate the complainant’s trade mark.

The Complainant says that the Respondent does not meet these criteria. Amongst other matters, the disputed domain name has been inactive since the date of registration, the Respondent sells competing tires on its main website and the Respondent has registered other domain names relating to competing brands including <neumaticos-goodyear.com>, <neumaticos-bridgstone.com> and <neumaticos-continental.com>.

The Complainant also says that some previous UDRP panels have taken the view that, without the express authorization of the relevant trade mark owner, a right to resell or distribute the trade mark owner’s products does not create a right to use a domain name that is identical or confusingly similar or which wholly incorporates the relevant trade mark.

The Complainant submits also that the disputed domain name is so confusingly similar to its well-known MICHELIN trade mark that the Respondent cannot have thought that it was able to develop a legitimate activity through the disputed domain name. Moreover, it says that the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services.

(3) The disputed domain name was registered and is being used in bad faith.

The Complainant asserts that is highly unlikely that the Respondent was unaware of the Complainant when it registered the disputed domain name. It says that MICHELIN is a well-known trade mark throughout the world. In the light of the reputation of the Complainant’s trade mark the Respondent’s reproduction of the trade mark in its entirety in combination with the generic and non-distinctive term “neumaticos” (that is, “tires” in Spanish) proves that the Respondent was aware of the existence of the Complainant’s trade mark. Moreover, as the Respondent is a reseller of the Complainant’s tires it was plainly aware of the Complainant at the time it registered the disputed domain name and would have appreciated that use of the MICHELIN mark would have been prohibited without the consent of the Complainant.

The Complainant also asserts that a search for the MICHELIN trade mark would have revealed to the Respondent the existence of the Complainant and its trademarks and that its failure to conduct such a search is a contributory factor in its bad faith registration of the disputed domain name.

So far as bad faith use is concerned, the Complainant says that the disputed domain name is inactive. However, the Complainant says that use in bad faith of a domain name is not limited to a positive act of bad faith and that inaction can also constitute bad faith. In this respect, it refers to General Motors LLC v.Carol Schadt., WIPO Case No. D2012-2106 in which bad faith use was found even though the respondent had not used the disputed domain name at issue in the proceedings to resolve to an operational website for at least eight years. The Complainant adds that, when previous UDRP panels have considered whether passive holding of a domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, they have indicated that close attention should be given to all the circumstances of the Respondent’s behavior. The Complainant cites a number of decisions under the UDRP in support of this proposition including FIL Limited v. Iyke Ajoa, WIPO Case No. D2012-1175.

Having regard to the above, the Complainant asserts that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trade mark in the disputed domain name, as it sought to do with the other domain names it registered which incorporated the trademarks of the Complainant’s competitors. The Complainant asserts that the circumstances are such that a likelihood of confusion will be presumed and that the disputed domain name is accordingly being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint;

(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 with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence of trade mark registrations for MICHELIN submitted by the Complainant establish that it has rights in the name MICHELIN, which comprises the second level of the disputed domain name.

The “.com” suffix of the disputed domain name is disregarded for the purposes of assessing similarity. Accordingly the question for determination is whether the addition of the word “neumaticos” followed by a hyphen to the Complainant’s trade mark prevents the disputed domain name from being confusingly similar to the Complainant’s mark.

The trade mark MICHELIN has a high degree of distinctiveness and the Complainant’s submissions establish that it is very well known and that it has a substantial reputation in the manufacture and supply of tires. The greater the degree of distinctiveness and repute of a complainant’s trade mark, the more likely that a domain name comprising the trade mark and a generic term with which the mark is associated will remain confusingly similar to the trade mark. Whether the generic term is positioned before or after the trade mark might occasionally impact on the assessment. However, the fame and distinctive character of the Complainant’s trade mark is such that the addition of the Spanish word “neumaticos” for “tire” before the Complainant’s trade mark does not prevent the disputed domain name from being confusingly similar to it. As the Complainant says, the public would focus on the distinctive element of the domain name and are likely to assume that the disputed domain name was owned by the Complainant.

The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

As the Complainant has acknowledged, there are circumstances in which resellers (whether authorized or unauthorized) of a complainant’s goods or services have been found to be entitled to have a legitimate interest in registering a domain name which incorporates a complainant’s trade mark. The decision which is most frequently cited as providing appropriate guidelines as to whether, on the facts of a specific case, a respondent should be held to have a legitimate interest in registering such a domain name is Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, to which the Complainant has referred.

The guidelines in Oki Data have been summarized above. The Panel accepts that the facts of this case are such that the Respondent does not fall within the criteria applied in Oki Data. In particular, the disputed domain name has been inactive since the date of registration, the Respondent sells competing tires on its main website and the Respondent has registered other domain names alluding to competing brands including <neumaticos-goodyear.com>, <neumaticos-bridgstone.com> and <neumaticos-continental.com<. It is not clear whether any of those registrations are still maintained by the Respondent but the Complainant’s evidence demonstrates that the relevant domain names had been registered by it.

Whether the Respondent’s registration falls within the Oki Data guidelines is not necessarily the end of the issue so far as legitimate interest is concerned. But there are no other facts or circumstances in the case record and the supporting the evidence provided by the Complainant which even hint at the Respondent being able to assert a legitimate interest in registering the disputed domain name. Moreover, the Respondent does not appear either to have corresponded with the Complainant in order to assert any such rights or legitimate interests nor has it taken the opportunity to claim such rights or legitimate interests by filing a response to the Complaint.

Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant’s evidence establishes that, as at the date of registration of the disputed domain name in September 2010, the Complainant was very well known internationally, including in Spain, where the Respondent is located. Moreover, as a reseller of the Complainant’s tires, the Respondent would have been aware of the existence of the Complainant and its well-known MICHELIN mark. It would also have been aware, as the Complainant has asserted, that the Complainant would not have agreed to the registration of the disputed domain name by the Respondent and that the Respondent may have done so in order to prevent the Complainant from registering its mark in a corresponding domain name. Where a respondent has not divulged its motives for registration, it is necessary for the Panel to make an assumption as to the likely motives. Against the background set out above, no plausible good faith motive is likely. The Panel accordingly finds that the disputed domain name was registered in bad faith.

Whilst the disputed domain name is inactive there are, as the Complainant has asserted, decisions by earlier UDRP panels which have found that non-use of a domain name can be found to constitute bad faith use. Such an approach is not expressly envisaged by any of the examples of bad faith use provided at paragraph 4(b) of the Policy but, those examples are specifically stated to be without limitation. A relatively recent decision in this respect is FIL Limited v. Iyke Ajoa, WIPO Case No. D2012-1175. In that case, the factors which led the panel to conclude that a passive holding of a domain name by the respondent should be considered as bad faith use were that the complainant’s trade mark had a strong international reputation, the respondent had provided no evidence of any actual or contemplated good faith use of the disputed domain name and that it was difficult to conceive of any actual or contemplated active use of the disputed domain name by the respondent that would be permissible and would not (for example) infringe the complainant’s trade mark rights.

The Panel considers that the criteria applied in FIL limited provide an appropriate yardstick in this case and that the Respondent falls foul of them. The fact that the Respondent had chosen to register other domain names which incorporated trade mark terms of the Complainant’s competitors reinforces the bad faith nature of the Respondent’s conduct. Accordingly, the Panel finds the disputed domain name to have been both registered and used in bad faith.

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 <neumaticos-michelin.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Dated: October 3, 2013