Complaignants are Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France and Michelin Recherche et Technique S.A. of Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
Respondent is Rajeev Sankaran of Chennai, Tamil Naidu, India. 2. The Domain Name and Registrar
The Disputed Domain Name (the “Disputed Domain Name”) is registered with GoD, LLC . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2012. On April 10, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Disputed Domain Name. On April 10, 2012, GoD, LLC 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 Respondent of the Complaint, and the proceedings commenced on April 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 4, 2012.
The Center appointed Richard W. Page as the sole panelist in this matter on May 9, 2012. 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
Complainants own numerous trademarks, which are protected throughout the world, in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and maps publications. Among their registrations, Complainants are the owner of the following trademark related to tires:
UNIROYAL, Indian Trademark No. 1397481, dated November 9, 2005 and covering goods in class 12 (the “UNIROYAL Mark”).
The trademark registrations of Complainants, including the UNIROYAL Mark, preceded the registration of the Disputed Domain Name by several years.
Complainants operate in India via two subsidiaries: Michelin India Private Limited and Michelin India Tyres Private Limited and have experienced an exponential growth in the Indian market in recent years.
Complainants have sent cease and desist letters to an identity protection or privacy service and ultimately to Respondent in this proceeding. The answer to the cease and desist letters came from an individual named Mr. Danier and admitted that Respondent was a cybersquatter acting in bad faith and addressed Complainants’ representative in an obscene and abusive manner. No resolution was achieved through bilateral negotiation. 5. Parties’ Contentions A. Complainant
Complainants contend that their trademarks, including the UNIROYAL Mark, enjoy a worldwide reputation in the automotive industry. Complainants assert a definite and undisputable reputation in the hotel/restaurant guides and maps publications industry and in French gastronomy.
Complainants further allege that the Disputed Domain Name is identical to or confusingly similar with the UNIROYAL Mark because it includes the principal element of the UNIROYAL Mark in its entirety.
Complainants assert that Respondent is not affiliated with Complainants in any way nor has Respondent been authorized by Complainants to use or to register the UNIROYAL Mark, or any domain name incorporating the UNIROYAL Mark. Complainants further assert that Respondent has no prior rights or legitimate interests in the Disputed Domain Name. Complainants further assert that the Disputed Domain Name is not being used in connection with a bona fide offering of goods or services and Respondent has neither used nor made any demonstrable preparation to use the Disputed Domain Name in conjunction with any bona fide offering of goods or services. Complainants refer to the admission by Respondent that he is a cybersquatter and that all his registrations of domain names are in bad faith.
Complainants argue that Respondent has registered and used the Disputed Domain Name in bad faith. As proof of bad faith, Complainants state that any trademark or general internet search of the phrase “Uniroyal” would have indicated Complainants’ trademark rights, thus Respondent had or should have had knowledge of the UNIROYAL Mark.
Complainants note that the Disputed Domain Name is currently inactive. However, Complainants contend that under the decisions in Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003 (hereinafter “Telstra”) and Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393 inactivity on the website, together with actual or constructive knowledge of Complainants’ rights and Respondent’s attempts to conceal his true identity are sufficient for a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
A respondent is not obliged to participate in a domain name dispute proceeding, but if he were to fail to do so, asserted facts that are not unreasonable may be taken as true and the respondent may be subject to the inferences that flow naturally from the information provided by the complainant. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System S.a.S., NAF Claim No. 94637; David G. Cook v. This Domain is For Sale, NAF Claim No. 94957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. 94925.
Even though Respondent has failed to file a Response or to contest Complainants’ assertions, the Panel will review the evidence proffered by Complainants to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainants must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and,
ii) that 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
Complainants contend that their UNIROYAL Mark is registered worldwide including in India. Complainants further contend that the Disputed Domain Name is identical to or confusingly similar with the UNIROYAL Mark because it includes the principal element of the UNIROYAL Mark in its entirety. Respondent has chosen not to contest these contentions.
The Panel finds that Complainants have protectable trademark rights and that the Disputed Domain Name is identical to or confusingly similar to the UNIROYAL Mark. Therefore, Complainants have met the requirements of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires Complainants to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once Complainants establish a prima facie showing that none of the three circumstances establishing rights or legitimate interests applies, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainants to prove each of the three elements of paragraph 4(a) of the Policy. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Complainants have come forward with allegations that none of the circumstances establishing rights or legitimate interests is available to Respondent, while Respondent has chosen not to contest these allegations. Therefore, Complainants have made the requisite showing, which Respondent has failed to rebut.
The Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainants contend that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four (4) nonexclusive criteria for Complainants to show bad faith registration and use of the Disputed Domain Name. The criteria in Paragraphs 4(b)(i)-(iv) are not exclusive. See Telstra, supra. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
One such factor is that Respondent has made no use of the Disputed Domain Name. Complainants allege that Respondent has not developed any active website or made any other use of the Disputed Domain Name. Telstra established that registration together with “inaction” and other factors can constitute bad faith.
A second factor found to support a finding of bad faith is Respondent’s knowledge of Complainants’ UNIROYAL Mark. Complainants allege, without refutation, that Respondent had actual knowledge of the UNIROYAL Mark. In addition, Respondent had substantial constructive notice of the UNIROYAL Mark, as a trademark or Internet search on the date of the registration of the Disputed Domain Name would have revealed Complainants’ worldwide registrations. Actual or constructive knowledge of the Complainants’ rights is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Document Technologies v. International Electronic Communications, Inc., supra (Respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith).
A third factor is the use of Complainants’ entire UNIROYAL Mark in the Disputed Domain Name, thus making it difficult to infer a legitimate use of the Disputed Domain Name by Respondent. In Cellular One Group v. Paul Brien, WIPO Case No.. D2000-0028, complainant filed a UDRP complaint against the registrant of domain name . Moreover, the panel inferred bad faith use of , because the domain name included complainant’s entire trademark. In light of complainant’s trademark registrations and applications, “it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name.” See Telstra at paragraph 7. The essence of this factor is that there is no plausible explanation as to why Respondent selected the name UNIROYAL as part of the Disputed Domain Name other than to trade on the goodwill of Complainants.
A fourth factor considered by the Panel in this matter is the admissions on behalf of Respondent that he is a cybersquatter and has multiple registrations made in bad faith.
A fifth and final factor considered by the Panel in this matter is the tawdry and uncouth language used by Mr. Danier in the otherwise professional context of the cease and desist letter sent on behalf of Complainants.
The evidence establishes five factors bearing on bad faith: (i) inaction or “passive use” by Respondent in the use the Disputed Domain Name to post any content on the Internet or for any other legitimate purpose; (ii) actual and constructive knowledge by Respondent of Complainants’ rights in the UNIROYAL Mark upon the registration of the Disputed Domain Name; (iii) the use of Complainants’ entire UNIROYAL Mark creating an absence of any plausible use of the Disputed Domain Name that would constitute good faith, (iv) admissions on behalf of Respondent that he is a cybersquatter acting in bad faith and (v) the use of profane language in the face of the professionalism of Complainants and their counsel.
Based upon this evidence, the Panel finds that Complainants have shown sufficient facts to support a finding that the Disputed Domain Name was registered and used in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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 be transferred to the Complainants.
Richard W. Page
Sole Panelist
Dated: May 11, 2012
Full & Egal Universal Law Academy