Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Taj Wang of Tytybong, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Trunkoz Technologies PVT Ltd. d/b/a OwnR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2012. On October 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 30, 2012 and November 1, 2012, the Center sent reminders to the Registrar requiring confirmation on the locking of the Domain Name, without success. On November 5, 2012 and November 9, 2012, the Center sent first formal reminders to the Registrar, without success. On November 12, 2012 the Center sent a second formal reminder to the Registrar, without success.
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, without having received any response to the request for registrar verification sent by the Center, and the proceedings commenced on November 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 7, 2012.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 14, 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
Complainant Michelin owns numerous trademark registrations around the world, including: International Trademark Nos. 348615 (registered, July 24, 1968) and 816915 (registered, August 27, 2003); Community Trademark No. 004836359 (registered, March 13, 2008); and Australian Trademark No. 258104 (registered, May 1, 1972) (“the MICHELIN Mark” or “the Mark”). It uses the MICHELIN Mark to conduct business in the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and the publication of maps. Complainant has marketing operations in more than 170 countries and it conducts business on the Internet including at and .
Since 1997, Complainant has conducted business in Australia. Before that time, the MICHELIN brand was present in Australia for many years through the sales of its products by distributors in that country. Michelin has a substantial network in Australia for tire sales and service including more than 800 retailers for passenger car and light truck tires, and over 300 retailers for truck and bus tires.
Before commencing this proceeding, Complainant sent via email and registered mail a cease and desist letter dated April 25, 2012. The latter was returned as undelivered. The address that Respondent has used to register the Domain Name appears to be erroneous. Complainant sent reminder correspondence to Respondent relating to the cease and desist letter on three occasions. Respondent did not reply to any of those reminders.
When Complainant sent its original cease and desist letter, Respondent was using the Domain Name with a website titled “Canadian Health&Care Mall” which purported to offer for sale pharmaceutical products. Sometime during the course of this proceeding, Respondent redirected the Domain Name to a page of commercial links related to tire products and services. On this new page, the “Recommended Links” were: “Michelin”, “Racing Tires”, “Michelin Cyclocross”, “Discount Michelin Tires”, “Cart Wheels”, “DAS”, “Continental Tires, and “Firestone.” The page also listed as “Popular Links”: “Bridgestone Tires”, “Pro Comp Tires”, “Wheels”, “General Tire”, “ATV Tires and Wheels” and “Dunlop Tires.” And “Discount ATV Tires” and “BFGoodrich Tires” were touted as “Top Links” on the same page. Currently, Respondent has once again directed the Domain Name to the “Canadian Health&Care Mall” website.
According to the publicly available WhoIs information, the Domain Name was registered on January 12, 2012. 5. Parties’ Contentions A. Complainant
The Domain Name is confusingly similar to the MICHELIN Mark, which has been registered around the world including in Australia. The Domain Name includes the Mark in its entirety. Previous panels have considered the Mark to be “well-known” or “famous.” The Domain Name adds “amyradasi” to the MICHELIN Mark. This term is not sufficient to distinguish the Domain Name from the MICHELIN Mark insofar as “MICHELIN” is the predominant part of the Domain Name. It is likely that Internet users could be mislead into thinking the Domain Name is somehow associated with Complainant. The gTLD “.com” is insufficient to avoid a finding of confusing similarity.
Respondent is not affiliated with Complainant in any way nor has Complainant authorized him to use and register the MICHELIN Mark or a domain name incorporating the Mark. Respondent does not have any prior rights or legitimate interests in the Domain Name. Complainant registered the MICHELIN Mark many years before Respondent registered the Domain Name. Using Complainant’s famous MICHELIN Mark in the Domain Name, Respondent cannot reasonably pretend it was intending to pursue a legitimate activity. Respondent is not commonly known by MICHELIN. Respondent has not demonstrated he used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of good or services. The Domain Name has resolved to an online pharmacy that appears to conduct fraudulent activities (e.g., spamming campaigns, incorrect information and references, discussion forums that evoke fraudulent orders), and to commercial links for tires including links using the MICHELIN Mark and the marks of Complainant’s competitors. These uses of the Domain Name that take advantage of the MICHELIN Mark and notoriety do not constitute a bona fide offering of goods or services under the Policy. It seems that Respondent registered the Domain Name using erroneous information because Complainant’s mailed letters were returned. And by not answering Complainant’s email and letters it can be assumed that Respondent has no rights or legitimate interests in the Domain Name.
Complainant is well-known around the world, including in Australia. In view of this reputation and Respondent’s inclusion of the entire MICHELIN Mark in the Domain Name, this proves Respondent was aware of the Mark when registering the Domain Name. Also, a quick trademark search (or an Internet search) for the MICHELIN Mark would have revealed to Respondent the Mark and its owner. Further evidence of Respondent’s bad faith registration of the Mark is that Respondent apparently provided false contact information when registering the Domain Name.
Respondent has used the Domain Name to direct Internet users to the website of an online pharmacy. The Minnesota Board of Pharmacy referred to on the website denies any association with Respondent and invites Internet users to file complaints with the United States Federal Trade Commission. By using the Domain Name in this manner, Respondent has taken advantage of the goodwill and notoriety associated with the MICHELIN Mark to attract the public. This is not a good faith use of the Domain Name. Likewise, using the Domain Name to direct Internet users to a webpage displaying pay-per-click links which are likely to generate revenues, is not good faith use. In fact, those links were advertising the sale of tires by Complainant and Complainant’s competitors. In addition, Respondent’s use of false contact information and its failure to reply to Complainant’s correspondence is further evidence of Respondent’s bad faith use of the Domain Name.
Complainant requests that the Domain Name be cancelled. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights.
The Panel finds that Complainant has established rights in the MICHELIN Mark by virtue of its international and Australian registrations and its long-standing and widespread use of the Mark.
The Panel further finds that the Domain Name is confusingly similar to Complainant’s MICHELIN Mark. Respondent has taken the Mark in its entirety and added both a series of letters “amyradasi”) on to it (not having any apparent meaning) as well as “.com”. The addition of the generic top-level domain (gTLD) ".com" is not a distinguishing element insofar as use of a gTLD is required, necessary and functional to indicate use of a name on the Internet (see Accor v. Noldc Inc.,WIPO Case No. D2005-0016). Similarly, adding the letters “amyradasi” to Complainant’s well-known MICHELIN Mark does not avoid confusingly similarity (see Public Storage v. Moving in Ca.com,WIPO Case No. D2009-1373, where the Panel found that “[n]umerous prior panels have found that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. Such a finding is based on the fact that the dominant and memorable part of the domain is a complainant's trademark.”).
The Panel therefore finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant represents that Respondent does not have any rights or legitimate interests in the Domain Name because: (1) Respondent is not affiliated with Complainant in any way nor has Complainant authorized Respondent to use the MICHELIN Mark for any purpose, including in registering the Domain Name; (2) Respondent has not been commonly known by the Domain Name; (3) Respondent has not been making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain because the Domain Name has been used with various sites that have the potential to generate income including a cite that contained hyperlinks to third-party sites, many offering competitive tire products and services, from which Respondent likely derived click-through revenue; and (4) Respondent’s use of the Domain Name has not been in connection with a bona fide offering of goods or services.
Complainant’s assertions and evidence, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue as Respondent has not rebutted the prima facie case made out by Complainant (see Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007).
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
By failing to submit a Response, Respondent has failed to invoke any of the circumstances that could demonstrate it did not register and use the Domain Name in bad faith.
Based on the evidence of record, the Panel agrees with prior UDRP panels holding that the MICHELIN Mark is well known, including in Australia. The Domain Name was registered on January 12, 2012, many years after Complainant began using the MICHELIN Mark in Australia and many other places as well. Given Complainant’s long-term use of the Mark, the distinctiveness and renown of the Mark, and the fact that Respondent incorporated the entirety of the Mark in the Domain Name (but for the addition of a series of letters after the Mark), the Panel finds it is highly unlikely Respondent was unaware of Complainant or its rights in the MICHELIN Mark when it registered the Domain Name.
With regard to bad faith use, Respondent is using a domain name that is confusingly similar to Complainant’s MICHELIN Mark in conjunction with commercially oriented sites including one having sponsored links to products and services offered by unrelated third-party competitors. The other, current site (Canadian Health&Care Mall) to which the Domain Name is directed, is likely a scam that falsely claims to be licensed by the Minnesota Board of Pharmacy, and that may send counterfeit drugs in response to orders or even no drug at all and yet still charge the patron’s credit card. The Panel concludes that by using the Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s MICHELIN Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy (see Lancôme Parfums et Beauté et Compagnie L'Oréal v. Deco Trends & Art, K. Plooyer, WIPO Case No. D2011-0524; F Hoffman-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956).
Moreover, Respondent’s use of false contact information and his failure to respond to Complainant’s repeated communications is further evidence of bad faith use of the Domain Name (see Ebay Inc. v. Wang Ming,WIPO Case No. D2006-1107; Certamen Miss Espana, S.L. v. P1ESOFT.COM, WIPO Case No. D2006-0679).
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Domain Name be cancelled.
Harrie R. Samaras
Sole Panelist
Date: December 28, 2012
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