The Complainants are Compagnie Générale des Etablissements Michelin, Michelin Recherche et Technique S.A. and MC Projects B.V. Amsterdam, succursale de Granges-Paccot of Clermont-Ferrand, France and Granges-Paccot, Switzerland respectively (collectively referred to below as Complainant), represented by Dreyfus & associés, France.
The Respondents are Wiktor Zajkiewicz, PPHU Wiktor Zajkiewicz and Tomasz Karczemski of Ksawerow, Poland and Lódź, Poland respectively (collectively referred to below as Respondent). 2. The Domain Names and Registrar
The disputed domain names , , , , are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2010. On October 29, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On October 30, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that Wiktor Zajkiewicz, PPHU Wiktor Zajkiewicz and Tomasz Karczemski are the registrants of the disputed domain names and providing the contact details.
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 November 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2010. The Response was filed with the Center on November 28, 2010.
The Center appointed Christian Schalk as the sole panelist in this matter on December 1, 2010. 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.
The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English. 4. Factual Background
The Complainant is a group of companies belonging to the same parent company which is well-known in the field of automobile and tire manufacturing as well as in the field of publishing hotel and restaurant guidebooks (“Guide Michelin”) and maps. The Complainant has marketed its products in many countries of the world for several decades.
The Complainant owns – among others – the following trademarks:
- International Trademark Registration No. 348615 MICHELIN, dated July 24, 1968 and covering goods and services in Int. Classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;
- International Trademark Registration No. 816915 MICHELIN, dated August 27, 2003 and covering goods and services in Int. Classes 35, 37, 39 and 42;
- International Trademark Registration No. 725741 KLEBER, dated January 5, 2000 and covering goods and services in Int. Classes 12;
- International Trademark Registration No. 631001 KORMORAN, dated December 19, 1994 and covering goods and services in Int. Classes 12;
- International Trademark Registration No. 786758 UNIROYAL, dated December 21, 2001 and covering goods and services in Int. Classes 14, 18 and 25;
- Polish Trademark Registration No. 56152 B F GOODRICH, dated December 8, 1977 and covering goods and services in Int. Classes 12.
The parties had a dispute on two domain names incorporating the Complainant’s trademarks ( and ) in 2004 which was settled amicably. In a letter dated August 7. 2004, the Respondent undertook not to use the Complainant’s trademarks in the future.
According to the information provided by GoD, Inc., the disputed domain names were registered on January 28, 2009.
At the time the Complaint was filed, the disputed domain names were linked to the Respondent’s website which is accessible under the domain name . This website is an online tire sale portal which offers products of the Complainant and of its competitors.
On October 27, 2009, the Complainant sent a cease and desist letter to the Respondent. Referring to its trademark rights the Complainant asked the Respondent to transfer the disputed domain names. A reminder was sent on November 5, 2009.
In replying to the Complainant’s letter on November 6, 2009, the Respondent requested from the Complainant a power of attorney and stated that it was prepared to transfer all disputed domain names.
The Complainant sent via e-mail the Power of Attorney to the Respondent on February 2, 2010, asked it to sign an undertaking which had been attached to the same e-mail and to transfer the disputed domain names to the Complainant’s GoDaddy account. On February 5, 2010, Wiktor Zajkiewicz replied that he was not owner of the disputed domain names. The Complainant wrote to PPHU Wiktor Zajkiewicz on February 11, 2010 indicating that the disputed domain names were transferred apparently to the Respondent’s lawyer, Tomasz Karczemski, whose firm’s website is linked to the website of the Respondent. The Complainant requested again the transfer of the disputed domain names. On March 19, 2010, the Respondent wrote to the Complainant stating that it intends to use the disputed domain names to sell Complainant’s brand tires and promote the Complainant’s brands. Referring to the disputed domain names the Respondent wrote:
“Domain that you want to leave and run into them, shop with only one brand. Here the name is not just a brand, but also the word “tire”. Also We promise that in this shops will be just sold the tires of the brand,for example, on oponyBF G will be only BFGoodrich tires, We also will not put links to other stores or brands. This solution enables us to sell more Michelin-brand tires, and we will promote Michelin tires.”
On April 15, 2010, the Complainant sent an e-mail to PPHU Wiktor Zajkiewicz to renew its request for a transfer of the disputed domain names. The Complainant asked the Respondent further, to provide it with the undertaking to which PPHU Wiktor Zajkiewicz could add Tomasz Karczemski as well.
The Respondent’s answer on April 20, 2010 was:
“Good morning
I would therefore ask for information on what domains we can continue to sell the brand Michelin tires ?
What is the domain such as .pl shop here, and here you have no objections ?
I also ask for information about what we should do with banners or flags with Michelin brand, which hang on our premise, we remove them and this will stop the sale of the brand?
We agree to transfer domain to the brand of tires (…), but we have doubt about the type of domains such as ,…, are we using these domains bring michelinowi losses or gaining by selling its tires?
This type of domains you can register a lot. Free domain are, for example: , , , , , , , …..
Please once again to talk to Michelin we want to communicate and transfer domain name – a brand of tires, and we expect in return from Michelin to benefit fro the type domains , , ….” 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain names are confusingly similar to the Complainant’s well-known trademarks in the field of manufacturing and sales of tires because they incorporate the MICHELIN, KLEBER, KORMORAN, BFGOODRICH and UNIROYAL trademarks in their entirety. In this context the Complainant cites RapidShare AG, Christian Schmidt v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059 to support its argument that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is confusingly similar to a complainant’s trademarks.
The Complainant argues further, that the disputed domain names feature a generic word, which is added to the trademarks. This generic word is “opony” which is the Polish word for “tire”. The Complainant believes that this term increases the risk of confusion because it is directly related to the business in which the Complainant is engaged. This fact could mislead Internet users who think that the Respondent is in some way associated with the Complainant. It is the Complainant’s view that the mere adjunction of this word is not sufficient to distinguish the disputed domain names from the Complainant’s trademarks. In this context, the Complainant cites Hoffmann-La Roche Inc. v. Private Person, Yaroslav P Savchenko,WIPO Case No. D2010-0394.
The Complainant alleges also, that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It explains that the Respondent is neither affiliated with the Complainant nor has the Complainant authorized or licensed the Respondent to use its trademarks or to seek registration of any domain name incorporating its trademarks. To support its arguments, the Complainant cites Planete Tortue v. none Pierre Guyot ,WIPO Case No. D2009-1540 and BlackRock Institutional Trust Companny, N.A. v. Investors FastTrack,WIPO Case No. D2010-1038 where the 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 by the respondent.
The Complainant contends also that the Respondent has no prior rights or legitimate interests in the disputed domain names since the Respondent has not proved so far to be the holder of prior rights or to have any legitimate interest in the disputed domain names. The Complainant argues further that several UDRP panels have stated that the trademarks MICHELIN and BFGOODRICH are well-known and are widely used by the Complainant (for instance, Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022, Michelin Recherche et Technique S.A. v. N, WIPO Case No. D2005-1107 and Compagnie Generale Des Etablissements Michelin – Michelin et Cie v. Petdorf Racing,WIPO Case No. D2005-0210) and that the Complainant’s trademark rights precede Respondent’s registrations by a considerable length of time.
The Complainant explains in addition that the Respondent already registered domain names incorporating the Complainant’s trademarks ( and ) in 2004 and that this dispute was settled amicably. At that time, the Respondent recognized that he acted improperly by not asking for the Complainant’s permission to register the domain names at issue and undertook not to use the Complainant’s trademarks in the future. The Complainant argues that the Respondent has not respected this commitment because it registered the disputed domain names.
The Complainant argues further that the disputed domain names were linked to the Respondent’s “www.” website. It contends that this website is an online tire sale portal which offered Complainant’s products and those of its competitors, for instance, Yokohama, Goodyear, Bridgestone and Pirelli. The Respondent directed the disputed domain names towards a website reproducing the Complainant’s trademarks and offering tires on sale after the Respondent had received the Complainant’s cease and desist letter. Therefore, the Complainant believes that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names and that by using these domain names the Respondent intentionally attempts to attract for commercial gain Internet users to Respondent’s website and other online locations by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
In this context the Complainant argues also that there is no evidence that the Respondent, before being aware of this dispute, ever disclosed the relationship between the parties. The Respondent put the disclaimer on its website only after the having received the Complainant’s cease and desist letter. In order to support its position that such a behavior is not consistent with fair use principles, the Complainant cites BlackRock Insitutional Trust Company, N.A v. Investors FastTrack,WIPO Case No. D2010-1038, Mutuelle d’Assurance du Corps de Sante Francais – MACSF Assurances v. Marketing Express, WIPO Case No. D2010-0242 and F. Hoffmann-La Roche AG v. Direct Privacy ID 9CCC6, WIPO Case No. D2010-0139.
The Complainant alleges also that the disputed domain names were registered and are being used in bad faith.
The Complaint contends that the Respondent knew or must have known the Complainant’s trademarks MICHELIN, BFGOODRICH, KLEBER, KORMORAN and UNIROYAL at the time it registered the disputed domain names since these trademarks were well-known throughout the world already at that time. The Complainant cites Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022, Michelin Recherche et Technique S.A. v. N, WIPO Case No. D2005-1107 and Compagnie Generale Des Etablissements Michelin – Michelin et Cie v. Petdorf Racing,WIPO Case No. D2005-0210 where the panels have considered MICHELIN and BFGOODRICH as famous trademarks. Therefore, the Complainant believes that the reproduction if the Complainant’s trademarks in combination with the Polish word for “tire” in the disputed domain names by the Respondent proves that it was aware of the existence of Complainant’s trademark.
In this context the Complainant explains further that the Respondent was also aware of the Complainant’s trademarks because there was a dispute between the parties in 2004 regarding two domain names registered by the Respondent without the Complainant’s authorization. Had the Respondent carried out a quick trademark or online search, it would have noticed the existence of the Complainant and its trademarks. In the Complainant’s view this is also evidence of bad faith. The Complainant cites Alstom v. Stockmarket Domains,WIPO Case No. D2008-1542 and Lancome Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226 to support its allegations. In this context the Complainant reports also that previous panels (for instance, in NBC Universal Inc. v. S,WIPO Case No. D2007-0077 and Alstom v. Domain Investments LLC,WIPO Case No. D2008-0287) have established that knowledge of the complainant’s Intellectual Property rights including trademarks by the respondent at the time of registration of a domain name proves also bad faith registration.
The Complainant contends that the Respondent is also using the disputed domain names in bad faith. It explains that the Respondent reproduced the Complainant’s well-known trademarks in the disputed domain names in order to capitalize on the Complainant’s long history, its reputation and goodwill and to use them to attract Internet users to a website for commercial gains by creating a strong likelihood of confusion among Internet users as to the source, sponsorship, affiliation or endorsement of its website. To support its conclusions, the Complainant cites Hoffmann-La Roche AG v. Anna Valdieri, WIPO Cases No. D2007-0956, Alstom v. FM Laughna,WIPO Case No. D2007-1736, L’Oreal SA v. LV Kefeng, WIPO Case No. D2009-1231 and Groupe Auchan v. Bai Huiqin,WIPO Case No. D2009-0840.
For the Complainant, a further indication of bad faith use is that the Respondent linked the disputed domain names to its “www.” website where it offered also products of the Complainant’s competitors. The Complainant alleges also that the fact that the Respondent directed the disputed domain names towards websites reproducing the Complainant’s trademarks and offering tires for sales after it received the Complainant’s cease and desist letter constitutes also bad faith use since the Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s website or other online locations by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Complainant argues further that the disclaimer on the Respondent’s website was only made after the receipt of Complainant’s cease and desist letter which in its view is inconsistent with fair use principles. B. Respondent
In its Response to the Complaint of November 28, 2010 the Respondent wrote that it consents to the remedies requested by the Complainant and agrees to transfer the disputed domain names on the basis of a “Parties agreement”, without need for a decision being rendered by the Panel.
The Respondent believes that the Panel should, therefore, grant a transfer without reaching the merits in this case since the Respondent consents to the transfer of the disputed domain names. In this context, the Respondent cites The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132, Williams-Sonoma, Inc. v. EZ Port, WIPO Case No. D2000-0207 and Slumberland France v. Chadia Acohuri,WIPO Case No. D2000-0195. 6. Discussion and Findings
As mentioned above, the Respondent has indicated that it consents to the remedy requested by the Complainant and agrees to transfer the disputed domain names on the basis of an agreement between the parties.
The Complainant, however, has not accepted the Respondent’s implicit offer of a settlement. Accordingly, there is no settlement agreement, and in this Panel’s view termination of the proceeding on the grounds of settlement pursuant to paragraph 17 of the Rules has no application.
A number of panel decisions have considered the proper course where a respondent has unilaterally consented to the transfer a domain name to a complainant (see, for instance, Deutsche Banke v. Carl Siegler, WIPO Case No. D2000-0984, Juventus F. C. S. p. A v. Sergio Bragança, WIPO Case No. D2000-1466, Desotech N. V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500, The State of the Netherlands v. Goldnames Inc, WIPO Case No. D2001-0520, et al.). There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207, Slumberland France v. Chadia Acohuri,WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) of the Policy are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620, Desotec N.V. v. Jacobi Carbons AB,WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) of the Policy are satisfied because the respondent’s offer to transfer is not an admission of the complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware,WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the respondent’s consent (Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386 and Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
In the present case, the Panel notes that the Respondent has not disputed any of the Complainant's contentions. Moreover, the Respondent has even taken the initiative, even if made quite late (at the last day where the Respondent could submit its Response), to declare itself ready for the transfer of the disputed domain name.
Under the circumstances described above, the Panel understands this to mean that the Respondent actually expressed its agreement to transfer the domain names to the Complainant (see, as examples Juventus F. C. S. p. A v. Sergio Bragança, WIPO Case No. D2000-1466, Deutsche Bank AG vs. Carl Seigler,WIPO Case No. D2000-0984). This constitutes a concession that arguably provides a sufficient basis for resolving this case without the necessity to make any further factual findings. See Juventus F.C. S.p.a. v. Sergio Bragança,WIPO Case No. D2000-1466, United Advertising Publications, Inc. v. Net Marketing,WIPO Case No. D2000-0058, Phoenix Technologies Ltd. v. Phoenix Global Networks, Inc.,WIPO Case No. D2000-0319. However, in light of the fact that the disputed domain names have not been transferred and in the interest of reaching a definitive resolution in this matter, the Panel deems it prudent to proceed to make findings on the merits of the case (see The State of the Netherlands v. Goldnames Inc, WIPO Case No. D2001-0520 and other cases cited therein). A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the terms MICHELIN, KLEBER, KORMORAN, BFGOODRICH and UNIROYAL. Therefore, it is clear that the disputed domain names are not identical to any of the Complainant’s trademarks.
However, the Panel finds the disputed domain names to be confusingly similar with the Complainant’s trademarks. As indicated by the Complainant and in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807, Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550, Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819, Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565, Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002.
In this case, the term “opony” is the Polish word for “tire” and therewith obviously a generic term. The products of the Complainant are well-known and the disputed domain names could be understood by Internet users finding , , , or on search engines or elsewhere as providing a link to a website belonging to the Complainant or being sponsored by the Complainant and there by increases the likelihood of confusion (see also Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956, Koninklijke Philips Electronics N.V. v. Anpol,WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. v. Jaaska (or Jääskä) Kaketti,WIPO Case No. D2001-0231).
The “.com” suffix in the disputed domain names does not affect the determination that the disputed domain name is confusingly similar with the terms MICHELIN, KLEBER, KORMORAN, BFGOODRICH and UNIROYAL in which the Complainant has trademark rights (see also: Compagnie Générale des Etablissements Michelin v. Trending,WIPO Case No. D2010-0484, Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936 and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and other cases cited therein).
Accordingly, the Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
In light of the material brought before the Panel, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names for the following reasons.
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. Especially, there is no evidence that the Respondent is commonly known by the disputed domain names. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.
The Respondent has previously reached an amicable settlement with the Complainant where it undertook not to register the Complainant’s trademarks as domain names. Despite this undertaking the Respondent registered again some of the Complainant’s trademarks as domain names and linked them with its online tire sale portal which offered the Complainant’s products as well as products of the Complainant’s competitors. Only as a reaction to the Complainant’s cease and desist letter, the Respondent put a disclaimer on this website. In the Panel’s view, the main reason of registering the disputed domain names was to attract for commercial gain Internet users to the Respondent’s website by creating likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website without disclosing the non-existent relationship between the parties. Such behaviour cannot constitute a legitimate non-commercial or fair use of the disputed domain names. The fact that the Respondent put a disclaimer on its website after receipt of the Complainant’s cease and desist letter does not have any influence on the findings of the Panel since, as it has been stated by other panelists in previous cases (see, for instance, BlackRock Insitutional Trust Company, N.A v. Investors FastTrack,WIPO Case No. D2010-1038, Mutuelle d’Assurance du Corps de Sante Francais – MACSF Assurances v. Marketing Express,WIPO Case No. D2010-0242 and F. Hoffmann-La Roche AG v. Direct Privacy ID 9CCC6,WIPO Case No. D2010-0139), the Respondent’s inclusion of a disclaimer on its website only after receipt of Complainant’s cease and desist letter is not consistent with fair use principles.
Accordingly, the Panel finds that the Complainant has satisfied the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds also that the disputed domain names were registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons.
It is a well-established principle under the Policy (see paragraph 2), followed by a number of prior decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806 and Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022), that at the time of registration a domain name registrant represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.
The Complainant’s trademarks enjoy a high reputation in the field of tire manufacturing. For instance, several UDRP panels have considered the trademarks MICHELIN and BFGOODRICH as famous trademarks (see Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022, Michelin Recherche et Technique S.A. v. N, WIPO Case No. D2009-1107 and Compagnie Generale Des Etablissements Michelin – Michelin et Cie v. Petdorf Racing,WIPO Case No. D2005-0210). Also the other trademarks can be found in any store selling tires and have been the subject of advertising spots in the media for many years.
Furthermore, the parties had reached an amicable settlement of a domain name dispute in 2004 where trademarks of the Complainant were involved. In this agreement, the Respondent undertook not to use the Complainant’s trademarks in the future in connection with domain names.
For all of these reasons the Panel believes that the Respondent must have been well aware of the Complainant’s trademark when it registered the disputed domain names (see Liseberg AB v. Administration Local Manage Technical,WIPO Case No. D2003-0864). Therefore, given the circumstances of this case, the Panel infers that the Respondent registered the disputed domain names in bad faith.
In the Panel’s view, the Respondent also used the disputed domain names in bad faith.
Internet users, especially in Poland, who type in the disputed domain names in their Internet browsers might reasonably expect to get redirected to the Complainant’s websites. Therefore, there is the risk that Internet users get confused on the true nature b the relationship between the Respondent and the Complainant because they could believe that the Respondent and the Complainant are somehow related.
Furthermore, by having reached the Respondent’s website where products of the Complainant’s products were offered as well, there is also the risk that consumers who searched for the Complainant’s products then chose products of the Complainant’s competitors.
Also, the Respondent’s behaviour after receipt of the Complainant’s cease and desist letter constitutes use in bad faith. The Respondent continued to use the disputed domain names in order to link them with websites where it offered tires for sale. The only purpose of doing this was to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
The fact that the Respondent put a disclaimer cannot “convert” bad faith use into good faith use since the Respondent put this disclaimer on its website only after having received the Complainant’s cease and desist letter. As it has been decided by several panels already, such behavior is not consistent with fair use principles (see BlackRock Insitutional Trust Company, N.A v. Investors FastTrack,WIPO Case No. D2010-1038, Mutuelle d’Assurance du Corps de Sante Francais – MACSF Assurances v. Marketing Express,WIPO Case No. D2010-0242 and F. Hoffmann-La Roche AG v. Direct Privacy ID 9CCC6, WIPO Case No. D2010-0139).
In light of the above, the Panel finds that the disputed domain names have been registered and used in bad faith, and that the Complainant has thus satisfied the third element of paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , , , , be transferred to the Complainant.
Christian Schalk
Sole Panelist
Date: December 15, 2010
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