WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Nurettin Toska

Case No. D2017-0010

1. The Parties

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

The Respondent is Nurettin Toska of Istanbul, Turkey, self-represented.

2. The Domain Name and Registrar

The disputed domain name <michelinmarketing.com> is registered with FBS Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2017. On January 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

Pursuant to the Complaint submitted in English and the registrar verification dated January 12, 2017 stating that Turkish is the language of the registration agreement, on January 18, 2017, the Center sent a request in English and Turkish for the Parties to submit their comments on the language of the proceeding. On January 19, 2017, the Complainant submitted its request for English to be the language of the proceeding, by reference to the Complaint. The Respondent did not submit any comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2017. The Respondent did not submit any formal response. Accordingly, the Center informed that it would proceed to appoint the Administrative Panel on February 17, 2017.

The Center appointed Kaya Köklü as the sole panelist in this matter on February 23, 2017. 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 is a renowned French company that is particularly specialized in tire manufacturing for the automotive industry. The Complainant’s group of companies is active globally in more than 170 countries with more than 100,000 employees.

The Complainant is the owner of the trademark MICHELIN, which is registered in a large number of jurisdictions, including in Turkey, where the Respondent is apparently located. The Complainant is the registered owner of the International Trademarks No. 1049371, registered on August 25, 2010 and No. 1254506 registered on December 10, 2014, both designating Turkey and covering protection for various goods and services.

Furthermore, the Complainant holds and operates various domain names incorporating the MICHELIN trademark, including <michelin.com> since December 1, 1993 and<michelin.com.tr> since October 6, 2005 where the associated website is in the Turkish language.

The disputed domain name <michelinmarketing.com> was created on August 15, 2016.

The Respondent appears to be an individual from Istanbul, Turkey.

Provided screenshots by the Complainant dated December 12, 2016 (Annex 27 to the Complaint) show that the disputed domain name was offered for sale. At the time of the Decision, the disputed domain name was inactive.

According to the available record, the Respondent did not reply to a cease-and-desist letter sent by the Complainant on September 12, 2016 and to various reminders, asking for the immediate cease of use and the transfer of the disputed domain name to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant believes that the disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark.

The Complainant argues that the main difference between the disputed domain name and the Complainant’s trademark is that the disputed domain name additionally comprises the descriptive term “marketing”. The Complainant is of the opinion that the addition of this descriptive term does not negate the confusing similarity with its MICHELIN trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its MICHELIN trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the MICHELIN trademark in connection with a bona fide offering of goods and services.

Finally it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that due to the notoriety of the MICHELIN trademark, the Respondent was or should have been aware of the MICHELIN trademark when it registered the disputed domain name. Furthermore, the Complainant is of the opinion that the Respondent tries to gain illegitimate benefits by freeriding on the goodwill of the MICHELIN trademark.

B. Respondent

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

However, the Center received an email communication on January 19, 2017 from the Respondent in Turkish asking the Center for brief clarification on the subject matter. The Center received a further email communication from the Respondent on February 17, 2017. In this latter email communication, again in Turkish language, the Respondent argues that he paid for the registration of the disputed domain name and that he cannot understand why the Complainant wants to have it now for free. He underlines that he will not transfer the disputed domain name to the Complainant.

No further communications have been filed by the Respondent.

6. Discussion and Findings

6.1. Language of the Proceeding

The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the registration agreement of the disputed domain name is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to formally respond to the Complaint or respond to the Center’s communication about the language of the proceedings, even though communicated in Turkish and in English. The Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English.

6.2. Substantive Issues

According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Paragraph 4(a) of the Policy states that the complainant bears the burden of proving that all these requirements are fulfilled, even if the respondent has not replied to the complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the MICHELIN trademark of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights. As evidenced in the Complaint, the Complainant is the owner of a large number of word and figurative trademarks comprising the mark MICHELIN in many jurisdictions worldwide, including in Turkey, for many years.

Although not identical, the disputed domain name fully incorporates the Complainant’s MICHELIN trademark.

The disputed domain name differs from the MICHELIN trademark only with the addition of the generic term “marketing”. In the Panel’s view, the addition of such a generic term does not negate the confusing similarity between the Complainant’s trademark MICHELIN and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not create a new distinctiveness separate from the Complainant’s MICHELIN trademark. The Panel concludes that the disputed domain name is likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has no rights or legitimate interests in the disputed domain name.

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s MICHELIN trademark in the disputed domain name.

In the absence of a formal Response by the Respondent, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services. Even his email communications of January 19, 2017 and February 17, 2017 do not indicate any such right or legitimate interest.

In fact, bearing in mind that the trademark MICHELIN is a term without a specific meaning, neither in English nor in Turkish language, and due to its worldwide notoriety, the Panel finds it hard to conceive of any use of this trademark in combination with the descriptive term “marketing” by the Respondent, which would qualify as a legitimate use.

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

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers with the Complainant’s MICHELIN trademark, apparently for commercial gain or any other illegitimate benefit, particularly for the following reasons.

First, the Panel believes that the Respondent must have been well aware of the Complainant’s trademarks when it registered the disputed domain name in August 15, 2016. At the date of registration of the disputed domain name, the Complainant’s MICHELIN trademark was already well known worldwide, including in Turkey.

Second, the Respondent preferred not to respond to the Complainant’s cease-and-desist letter of September 12, 2016 and its various reminders. The Respondent even preferred not to formally respond to the Complainant’s contentions, although being informed of the pending administrative proceedings by email and courier in English and Turkish. The Center received email communications from the Respondent without substantive content, mainly stating that he is not willing to transfer the disputed domain name voluntarily for free.

Third, the Respondent offered the disputed domain name for sale, as evidenced in Annex 27 of the Complaint. In view of the Panel, this is a further strong indication for the Respondent’s bad faith intentions to gain illegitimate benefit by freeriding on the notoriety and goodwill of the Complainant’s MICHELIN trademark.

The fact that the disputed domain name is currently inactive does not change the Panel’s findings in this respect.

All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 disputed domain name <michelinmarketing.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: March 3, 2017