The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & Associès, France.
The Respondent is Fatih Gul of Istanbul, Turkey. 2. The disputed domain name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2010. On December 23, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 23, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 December 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on February 14, 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. 4. Factual Background
The Complainant is one of the largest tire manufacturers in the world and is the owner of the trademark MICHELIN, which is largely protected worldwide and specifically in Turkey, in connection with the automobile and tire manufacturing industries, as well as in connection with hotel and restaurant guides and maps publications.
The Complainant has been present in Turkey since 1936 through the importation of its products by sales distributors. The Complainant’s subsidiary Michelin Lastikleri Ticaret A.Ş. was established in 1996 to manage and develop Turkey’s markets.
The Complainant is the owner of several trademark registrations for MICHELIN, including the following International Trademark registrations duly extended to Turkey: Nos. 740073, registered on August 8, 2000 and duly renewed, in classes 7, 12 and 17; 778878, registered on March 18, 2002, in class 12; and 771031, registered on September 6, 2002, in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42.
The Complainant is also the owner of Turkish Trademark registrations for MICHELIN, such as the registration Nos. 134240 of May 15, 1972, duly renewed, in classes 1, 6, 7, 8, 9, 11, 12, 14, 16, 17, 20, 21, 23, 25, 26, 27, 28 and 34; and 2001/11917 of June 21, 2001, in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42.
The Respondent registered the disputed domain name on August 10, 2009. 5. Parties’ Contentions A. Complainant
The Complainant contends that disputed domain name is confusingly similar to the trademark in which the Complainant has rights as it reproduces the well-known trademark MICHELIN in its entirety, with the mere addition of the descriptive term “lastik”, which is the Turkish for “tire”.
The Complainant highlights that the Respondent has not been authorized by the Complainant to use its trademark and that the Respondent has no prior rights or legitimate interests in the disputed domain name. The Complainant also states that the Respondent has failed to demonstrate, before receiving any notice of the dispute, use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, since the disputed domain name resolves to a parking page containing pay-per-click links, which are likely to generate revenues for the Respondent.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, in light of the worldwide reputation of the Complainant and its trademarks, as well as the high level of notoriety of Complainant, it is hard to believe that the Respondent was unaware of the existence of Complainant and of its trademarks at the time of the registration of the disputed domain name. The Complainant also states that a simple search via Google or any other search engine using the keyword “Michelin” would have revealed the existence of the Complainant’s trademark. The Complainant concludes that the use of the disputed domain name to divert Internet users to a web page providing click through revenues to the Respondent is a further evidence of the Respondent’s bad faith.
As an additional circumstance evidencing bad faith in the use of the disputed domain name, the Complainant highlights that the Respondent, in reply to a cease and desist letter addressed to its attention on behalf of the Complainant, requested an amount of TRY 1950 (about USD 1200) + VAT in exchange for the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of several International and Turkish registrations for MICHELIN.
The Panel finds that the disputed domain name is confusingly similar to the trademark owned by the Complainant since, also pursuant to a number of prior decisions rendered under the Policy, the addition of a descriptive term to a trademark is not a distinguishing feature.
Therefore, the mere addition of the word “lastik” does not exclude the confusing similarity between the disputed domain name and the Complainant’s trademark. See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
More in particular, the word “lastik” (which is the Turkish word for “tire”) is descriptive of the Complainant’s business and is therefore apt to increase the confusing similarity between the disputed domain name and the Complainant’s trademark and activity. See, along these lines, Compagnie Générale des Etablissements Michelin v. Pavol Horecny,WIPO Case No. D2009-1554, with reference to the domain name , in which it was stated “Furthermore, this term is a common Slovakian word, meaning “tire”, the term “pneumatiky” even increases the risk of confusion, because it is directly related to the Business, in which the Complainant is engaged”.
Moreover, as stated i.a. in Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 and in Chevy Chase Bank, F.S.B. v. Peter Ojo,WIPO Case No. D2000-1770, the specific top level of a domain name such as ”.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of evidence on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
The Panel notes that the disputed domain name is pointing to a sponsored pay-per-click (“ppc”) web site mainly aimed at directing visitors to competing third party commercial web sites.
The Panel finds that, under the circumstances, the use of the disputed domain name merely for a pay-per-click page which directs visitors to various third party commercial websites does not constitute a legitimate, noncommercial use of the disputed domain name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044.
Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the domain name to resolve to a directory of commercial web sites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept.,WIPO Case No. D2003-0827, the panel stated that “[…] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. [The Domain Name ] is only used as a link to a generic directory [. . .]. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.
See also, inter alia, Sports Holdings, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the Domain Name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the Domain Name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
Along the same lines was the decision Fifth Third Bancorp v. Whois ID Theft Protection,WIPO Case No. D2006-1209, where the panel found that there was a strong prima facie case that the Respondent had no right or legitimate interests in the use of the domain name since “in this case the Complainant has strong and longstanding goodwill in its marks, the similarity of the Domain Name and the marks is considerable, and the Domain Name is being used to provide competing services in the same market sector as that in which the Complainant operates by exploiting the potential confusion created by the similarity of the marks”.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to bad faith at the time of the registration, the Panel notes that, in light of the widely known character of the Complainant’s trademark worldwide and specifically in Turkey, were the Complainant has operated through distributors since 1936 and has established its subsidiary Michelin Lastikleri Ticaret A.Ş in 1996, the Respondent was very likely aware of the Complainant’s trademark MICHELIN.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines, see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive worldwide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel finds that Internet users, in light of the contents of the web page linked to the disputed domain name, where also links for third parties’ web sites promoting the sales of tires of various brands are referenced, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286).
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent has attempted (and probably succeeded) to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site.
As an additional circumstance suggesting bad faith, the Panel notes that the Respondent requested about USD 1200 for the transfer of the disputed domain name, amount which is well in excess of the out of pocket costs directly related to the domain name.
As a further circumstance evidencing bad faith, the Panel notes that there has been no Response and, in this case, it is open for the Panel to infer a prima facie case of bad faith registration. Along the same lines is the decision Renegade LLC v. Kenneth Gibert,WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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 disputed domain name be transferred to the Complainant.
Luca Barbero
Sole Panelist
Dated: February 28, 2011
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