The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Private Registration of Sydney, New South Wales, Australia / Nigel Chynoweth of Ocean Shores, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Crazy Domains FZ-LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2013. On June 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 8, 2013.
The Center verified that the Complaint together with 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 July 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2013.
By an exchange of emails in July and August 2013, which took place between the Respondent Nigel Chynoweth, the Center and the Complainant’s representatives, Dreyfus & associés (Dreyfus), Mr. Chynoweth offered to transfer the disputed domain name. The administrative proceeding was suspended. Apparently for technical reasons the transfer could not be made, and the administrative proceeding was re-instituted on August 7, 2013. Further details of these events are set out in Section 5 B below. On August 7, 2013, having re-instituted the proceedings, the Center informed the parties that the new Response due was August 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the parties that it shall proceed to appoint the Panel.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on August 28, 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 Complainant, Compagnie Générale des Etablissements Michelin (Michelin), provided a list of the registered trademarks upon which its Complaint is based. Michelin owns various TYREPLUS trademarks worldwide. These include TYREPLUS Australian trademark No. 918928 dated July 5, 2002 and TYREPLUS International trademark No. 925317 dated March 16, 2007.
Michelin has operated in Australia for some 50 years. The Complainant also owns the domain names since 2003, and since 2012.
The contact address of Private Registration and of Nigel Chynoweth is New South Wales, Australia.
The disputed domain name was registered on January 13, 2013. 5. Parties’ Contentions A. Complainant
The Complainant states that:
1. Through its representatives it attempted to deal with the matter amicably before instituting this administrative proceeding. It sent a cease-and –desist letter dated March 4, 2013. The Respondent, Private Registration, was asked to disclose the identity and contact details of the Registrant, and to transfer the disputed domain name to the Complainant. Despite three reminders, the Respondent never replied [the exchange of emails in July and August 2013, involving Nigel Chynoweth is referred to in Section 5 B below].
2. Michelin owns numerous trademarks that are protected worldwide in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and maps. Michelin operates in over 170 countries and has over 113,000 employees.
3. The contact address of both Private Registration and of Nigel Chynoweth is New South Wales, Australia. Michelin has operated in Australia for the last 50 years through its importation by sales distributors.
4. Michelin is a pioneer in tire technology and manufacturing and is the trusted brand for tires for all types of vehicles. Michelin has been the top choice in the region for many decades for consumers, dealers and corporate clients in the car manufacturing and distribution, fleets, government institutions, public transportation and racing teams.
5. Amongst the trademarks owned by the Complainant is the TYREPLUS trademark. TYREPLUS was established in 2002 and is an independent professional network of tire retail stores which specializes primarily in Michelin and BFGOODRICH tires. TYREPLUS is supported by Michelin “hence the close affiliation of the Michelin Man (Bibendum) with TYREPLUS advertising […]”
6. The disputed domain name is inactive and resolves toward the host default page.
The Complainant’s contentions are that:
- The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name;
- The Respondent registered and is using the disputed domain name in bad faith;
The Complainant seeks the transfer of the disputed domain name to itself. B. Respondent
Exchange of emails
From July 16, 2013 an exchange of emails took place between the Respondent Nigel Chynoweth; the Center; and Dreyfus. Those emails included the following:
On July 16, 2013 the Respondent, Nigel Chynoweth wrote to the Center:
“I have received your correspondence regarding a complaint about one of my domaine names in Australia and wait for your response.
Thanks
Nigel Chynoweth
Tyre shop broker
Professionals”
On July 18, 2013, Mr. Chynoweth wrote to the Complainant’s representatives:
“I understand we have a issue with the mobi site I have registered in Australia www., it is unfortunate you could not have contacted me directly or made an attempt to do so to rectify this issue. As the only specialised tyre shop brokers in Australia buying and selling retail tyre shops we have many active and non active mobi sites including tyreplus. I understand there maybe a trade mark issue and am happy to transfer this mobi site to you.Regards
Nigel Chynoweth”
On July 19, 2013, the Complainant agreed to the suspension of the proceedings in the light of Mr. Chynoweth’s offer to transfer the disputed domain name, and on July 22, 2013, the Complainant’s authorized representative wrote to Mr. Chynoweth:
“Dear Mr. Chynoweth,
We refer to your email below.
We suspended the procedure regarding the domain name .
In order to terminate this dispute, we thank for pushing the domain name into our client's CrazyDomains account: […]
We look forward to hearing from you.”
On August 5, 2013, Mr. Chynoweth wrote to the Complainant’s authorized representative:
“I was unable to transfer this domain name to the CrazyDomains, maybe because your client is not Australian domain carrier. I have delisted the domain name so you are free to register this yourself.”
On August 19, 2013, Mr. Chynoweth wrote to the Center:
“As previously mentioned the domain name www. as been de listed and is available. I believe this matter is finalized any further harassment by you I will be forwarding the Australian Federal Police.”
On August 22, 2013, the Center wrote to Mr. Chynoweth saying that:
“The Center notes your comments that the disputed domain name is de-listed and available. However, according to the publicly available WhoIs of today (please see attached), the disputed domain name is still under a registrar lock.
As per the Complainant’s request of August 5, 2013 (please see attached), the administrative proceedings were reinstituted as of August 7, 2013. The Response due date was set as August 17, 2013. As this date has now passed, and as per the Center’s email of August 19, 2013 (please see attached), we shall now proceed to the appointment of the Administrative Panel. Any further communication from you will be forwarded to the Panel for its consideration.” Response
No formal Response in accordance with Paragraph 5 of the Rules was received from Private Registration or Nigel Chynoweth. 6. Discussion and Findings
Paragraph 15 of the Rules states that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark 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.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
Notwithstanding the fact that the Respondent Nigel Chynoweth offered to transfer the disputed domain name, the Panel considers that the burden of proof in relation to all three elements still lies with the Complainant. A. Identical or Confusingly Similar
The Complainant has shown that it is the owner of the well-known trademark TYREPLUS. The disputed domain name incorporates the Complainant’s mark in its entirety.
In Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 the panel stated that “the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”.
The Complainant contends that the addition of the gTLD “.mobi” is only a minor difference that is insufficient to avoid any likelihood of confusion between the Complainant’s trademark and the disputed domain name.
The addition of “.mobi” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s mark. For example, in Wirecard AG v. Wang Degui, WIPO Case No. D2013-0391, the Panel stated that “it is already well established that the addition of a gTLD extension such as “.mobi” is irrelevant when determining whether a domain name is confusingly similar to a registered trademark”.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant contends that the Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating that mark. Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name: the TYREPLUS Australian Trademark was registered in July 2002. The disputed domain name was registered in January 2013.
The Complainant also argues that the fact that Mr. Chynoweth registered the disputed domain name with a privacy shield service in order to hide his identity and prevent the Complainant from contacting him “highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain name.”
Paragraph 4(c) of the Policy sets out circumstances which, without limitation, may demonstrate a right or legitimate interest in a domain name. The Respondent was entitled to deal with the Complainant’s allegations, and was entitled to demonstrate any right or interest in the disputed domain name, by way of the circumstances listed in paragraph 4(c) of the Policy. The Respondent has not done so. Whilst it is for the Complainant to prove the three elements of paragraph 4(a) of the Policy (notwithstanding Mr. Chynoweth’s apparent willingness to transfer the disputed domain name), it is clearly established that, once the Complainant has made out a prima facie case, it is then a matter for the Respondent to answer that case. Whether or not a Respondent has rights or legitimate interests is a question which a Respondent is better able to answer than a Complainant.
For the foregoing reasons, the Panel is satisfied that the Complainant has shown its compliance with the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Registered in bad faith
The Complainant contends that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name: the Complainant and its numerous trademarks – including the TYREPLUS trademark - are well-known throughout the world, especially in Australia. There are more than 50 “Tyreplus” dealers in Australia: “It is hard to believe that Respondent was unaware of the existence of the Complainant and its trademarks at the time of registration of the disputed domain name.”
In particular, the Complainant states that the fact that the disputed domain name reproduces the Complainant’s TYREPLUS trademark in its entirety demonstrates that the Respondent must have been aware of the existence of that trademark. Use in bad faith
The disputed domain name is inactive. The Complainant asserts that previous Panels have held that the passive holding of a domain name may satisfy the requirements of paragraph 4(a)(iii)of the Policy. For example, in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel held that “[…] the concept of a domain name "being used in bad faith" is not limited to positive action. Inaction is within the concept.That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
The particular circumstances of that case which lead the panel to conclude bad faith included the fact that:
(i) the complainant’s trademark had a strong reputation and was widely known, as evidenced by its substantial use in Australia and in other countries;
(ii) the respondent had provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the respondent had taken active steps to conceal his true identity, by operating under a name that is not a registered business name.
Whilst the Panel notes the emails sent by Mr. Chynoweth, there are nevertheless similar circumstances in this case.
The Panel is satisfied that the Complainant has provided evidence of bad faith registration and use and has therefore proved the requirements of paragraph 4(a)(iii) of the Policy. 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 Complainant.
Anthony R. Connerty
Sole Panelist
Date: September 2, 2013
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