Complainant is Michelin Recherche et Technique S.A., Granges-Pacot, Switzerland, represented by Dreyfus & associés, Paris, France.
Respondents are Not Company 3262753, Kaliningrad, Svetlyy, Russian Federation; and PrivacyP, Null, Queensland, Australia. 2. The Domain Names and Registrar
The disputed domain names and are registered with Click Registrar, Inc. d/b/a (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 25, 2013. On January 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 28, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 30, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 4, 2013, adding the Registrar disclosed registrant “Not Company 3262753”.
The Center verified that the amended 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 February 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 27, 2013.
The Center appointed Timothy D. Casey as the sole panelist in this matter on March 13, 2013. 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 disputed domain names were registered on July 15, 2012. Complainant owns a number of KORMORAN trademarks (the “Marks”) around the world, including at least International Trademark Nos. 791668, dated November 8, 2002 in class 12, and 631001, dated December 19, 1994 in class 12, but of which have been extended to the Russian Federation where Respondent Not Company 3262753 (herein “Respondent 1”) is located. International class 12 includes tires/tyres as goods within the class. Complainant acquired the Marks from a Polish company and has used the Marks in the Russian Federation since 1997. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain names are identical or at least confusingly similar to the Marks, that the addition of descriptive terms “tires” and “tyres” is without effect, as is the extension “.com”.
Complainant contends that Respondents are not affiliated with Complainant and have not been authorized to use the Marks or the disputed domain names, that Respondents have no prior rights or legitimate interest in the disputed domain names and is not commonly known by the Marks. Further, the disputed domain names are inactive and there is no evidence that Respondents have made any use or prepared to use the disputed domain names in connection with a bona fide offering of goods or services. Complainant also contends that the Marks have no meaning in English, the language of the Registration Agreement.
Complainant contends that Respondents could not have been unaware of the Marks at the time the disputed domain names were registered, and that either a trademark search or search engine search would have revealed the same. Complainant further contends that the combination of the generic terms “tires” and “tyres” with the Marks proves Respondents’ awareness of the Marks, which are used on tires/tyres. Complainant contends that these facts support a finding of registration in bad faith.
Complainant also contends that Respondents have used the disputed domain names in bad faith because use of the Marks was not permitted or licensed, the disputed domain names are confusingly similar to the Marks, and that it is likely that Respondents registered the disputed domain names to prevent Complainant’s use of the same domain names. Complainant also speculates that Respondent’s motive in registering the disputed domain names was to capitalize on or otherwise take advantage of the Marks, but acknowledges that the disputed domain names are inactive. However, Complainant notes that the disputed domain names could be activated at any time, and/or renewed, and that Respondent 1’s use of a privacy service to conceal its true identity and, even then, using a number instead of a name to conceal its identity, is further evidence of bad faith use. B. Respondent
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings
In view of Respondents’ failure to contest by Complainant’s contentions through a reply, the Panel will accept Complainant’s contentions as true. The Panel also accepts the naming of the privacy shield and underlying registrant as Respondents in the UDRP proceeding. A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to the Marks. The “.com” extension is without consequence and does nothing to distinguish the disputed domain names from the Marks. While the disputed domain names are not otherwise identical to the Marks, due to the inclusion of the descriptive terms “tires” and “tyres”, those descriptive terms do nothing to distinguish the disputed domain names. Rather, the addition of the descriptive terms, which correspond to the type of goods on with the Marks are used and registered, serves to enhance any possible confusion that might exist between the disputed domain names and the Marks. Accordingly, this element of the Policy has been met by Complainant. B. Rights or Legitimate Interests
Complainant contends that Respondents have no rights or legitimate interests in the disputed domain names and the Panel can find no evidence that points to the contrary. In light of Complainant’s unrebutted prima facie argument in this case, this element of the Policy has been met by Complainant. C. Registered and Used in Bad Faith
The Marks apparently originated out of Eastern Europe and have been used in the Russian Federation, where Respondent 1 is located, since 1997. The Panel agrees with Complainant’s contention that Respondent 1, at least, was aware of the Marks prior to registering the disputed domain names, which is further evidenced by the fact that Respondent 1 purposely combined the descriptive terms with the Marks to create the dispute domain names, which Respondent 1 would have been extremely unlikely to do unless Respondent 1 was aware that the Marks are used on tires/tyres, especially since the Marks have no meaning in English.
While there is little evidence of use in bad faith, as there does not appear to have been any use, Respondent 1’s failure to use the disputed domain names in any way, or to make any preparations to use the disputed domain names in any way, coupled with Respondent 1’s use of a privacy service, at least suggest a bad faith intent on behalf of Respondent. Deciding in favor of Respondents under such circumstances would be unfair to Complainant as it would likely then lead to Respondent 1’s subsequent use of the disputed domain names with some impunity. Under the totality of the circumstances, in line with the consensus view among UDRP panels, the Panel finds the passive holding of the disputed domain names does not prevent the Panel from finding the disputed domain names have been used by Respondents in bad faith. Accordingly, absent any contentions to the contrary by Respondents, the Panel finds this element of the Policy to have been met by Complainant. 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 names, and be transferred to the Complainant.
Timothy D. Casey
Sole Panelist
Date: March 29, 2013
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