The Complainant is Michelin Recherche et Technique S.A., Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is PrivacyP, Domain Admin, Nobby Beach, Queensland, Australia / DH5740243, DH5740243, DH5740243, Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2013, the Registrar transmitted by email to the Center its verification 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 15, 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 18, 2013.
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 July 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2013.
The Center appointed David Perkins as the sole panelist in this matter on September 11, 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 4.A The Complainant Corporate History
4.A.1 The original pneumatic Michelin tire business dates from 1889 when it was carried on under the name Michelin et Cie. In 1940 that company was renamed Manufacture de Caoutchouc Michelin and in 1951 renamed again as Compagnie Générale des Etablissements Michelin [“CGEM”]. The Complainant Michelin Recherche et Technique S.A is a subsidiary of CGEM. The Complainant’s Business
4.A.2 The businesses of the Complainant comprise manufacture of vehicle tires and the publication of maps and hotel / restaurant guides. Its 2012 Registration Document (exhibited to the Complaint) identifies its 8 Product Lines, the 8 Regions in which those products are distributed and sold, its integrated tire dealership networks in Europe and the United States, and its Research, Development and Process Engineering Centres in Europe, North America and Asia. It has 69 production facilities in 18 countries, including in Australia, where the Respondent is located. The Complainant’s MICHELIN brand was sold in Australia through a network of distributors for some 50 years prior to establishing Michelin Pty Ltd in 1997. That Company’s Head Office relocated to Melbourne in 2001. The BFGoodrich brand
4.A.2.1.Some years ago, the Complainant acquired from the BFGoodrich Corporation its BFGOODRICH trademark. In 1870 Dr. Benjamin Franklin Goodrich created the first North American rubber company. In 1896 BFGoodrich became the first automobile tire manufacturer in the United States and over the years the BFGOODRICH brand for vehicle tires became well known internationally. The reputation of BFGOODRICH tires has become particularly known for use in rallying and by 2007 was recognised as the benchmark tire for Long-distance Rallying. One of the Complainant’s hallmark tires is the BFGOODRICH “Rugged Terrain TA” off-road tire. The BFGoodrich and Rugged Terrain T/A trademarks
4.A.2.3 The Complainant owns numerous trademark registrations worldwide for BFGOODRICH, including the following registrations in Australia (where the Respondent is located):
Country Reg. No. Trade Mark Class(es) Dates applied for and registered
Australia
306,047
BFGoodrich
12
April 4, 1977
Australia
1,290031
Rugged terrain t/a
12
February 10, 2009
International Registration*
994,141
RUGGED TERRAIN T/A
12
February 10, 2009
The International Registration derives from Swiss trademark registration No. 582,227 of September 5, 2008 and covers Australia and Japan. The BFGOODRICH domain names
4.A.3 The Complainant also owns a number of domain names which incorporate the BFGOODRICH trademark. These include:
registered August 15, 1996
registered June 19, 1997
registration date not provided but the domain name was last updated on October 1, 2012 4.B The Respondent
4.B.1 In the absence of a Response, all that is known about the Respondent is that it registered the disputed domain name on January 21, 2013. The disputed domain name resolves to a pay-per-click website which displays information relating to the Complainant’s BFGOODRICH Rugged Terrain T/A tire but which also provides links to websites of the Complainant’s competitors in the motor vehicle tire business.
4.B.2 The Complaint describes the Respondent as an anonymous service which has been respondent in more than 370 cases under the UDRP administered by the Center and the National Arbitration Forum, including 24 such cases initiated in the first six months of 2013. 5. Parties’ Contentions 5.A Complainant 5.A.1 Identical or Confusingly Similar
5. A.1.1.The Complainant has registered rights in the well known BFGOODRICH trade mark and also in the RUGGED TERRAIN T/A trade mark.
5. A.1.2. The disputed domain name incorporates the BFGOODRICH trade mark in its entirety. That mark has been held to be “well-known”, “widely known” and to have “a worldwide reputation” in a number of cases under the Policy. The Complaint cites Compagnie Générale des Etablissements Michelin, Michelin Recherche et Technique S.A. and MC Projects B.V. Amsterdam, succursale de Granges-Paccot v. Wiktor Zajkiewicz, PPHU Wiktor Zajkiewicz and Tomasz Karczemski, WIPO Case No. D2010-1823 “famous trademark”: Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S.A. v. Eijiobara Obara, WIPO Case No. D2012-0047 “well-known trademark”: Compagnie Générale des Etablissements Michelin (Michelin), Michelin Recherche et Technique S.A. v. Santiago Holdings Ltd, PrivacyP, WIPO Case No. D2012-0635 “distinctive trademark” and Michelin Recherche et Technique S.A. v. A Domain Privacy / Transure Enterprise Ltd, Host Master, WIPO Case No. D2013-0430 “well known throughout the world” and “a worldwide reputation”.
5. A.1.3. The Complainant cites decisions under the Policy where incorporation of a complainant’s trademark in its entirety into a disputed domain name has been held to establish that the domain name is identical or confusingly similar to that mark. For example, Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150 against Complainant’s SWAROVSKI trademark: Hoffmann-La Roche Inc. v. Krontak Ladik,WIPO Case No. D0013-0019 and against Complainant’s XENICAL trademark for its weight management pharmaceutical and ACCUTANE for its dermatological preparation for the treatment of acne; and RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin WIPO Case No. D2010-1059 against the Complainant’s RAPIDSHARE trademark.
5. A.1.4. Further, the Complainant cites decisions under the Policy where the combination of two distinctive trademarks in a disputed domain name has been held to establish confusing similarity. Here, the disputed domain name combines Complainant’s distinctive BFGOODRICH and RUGGED TERRAIN T/A trademarks. The decisions cited include Intesa Sanpaolo S.p.A v. Porchester Partners, Inc./ Janice Liburd, WIPO Case No. D2010-1359 and against the Complainant (Intesa Sanpaolo S.p.A), an Italian banking group, resulting from the merger of Banco Intesa S.p.A and Sanpaolo IMI S.p.A which had trade mark registrations for INTESA: INTESA SANPAOLO; and BANCO DI NAPOLI. In relation to the disputed domain name, the panel noted that it combined two of the Complainant’s distinctive trademarks INTESA and BANCO DI NAPOLI and held:
“This combination of two distinctive signs reinforces the overall impression about a supposed association or joint venture between two widely recognised companies and does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademarks.”
5. A.1. 5. Other decisions cited are Educational Testing Service (ETS) v. International Names Ltd.WIPO Case No. D2007-0449 against Complainant’s trademarks ETS and TOEFL:WIPO Case No. D2005-0973 against Complainant’s DANISCO and GENENCOR trademarks:WIPO Case No. D2002-0118 against Complainant’s NESTLE and PURINA trademarks and ABB Asea Brown Boveri Ltd v. Mark Maddison,WIPO Case No. D2001-0538 and variants against Complainant’s ABB and EUTECH trademarks.
5. A.1.6. Finally, the Complainant points to the dominant feature of the disputed name being the well-known BFGOODRICH mark, which it says will lead the public to assume that the disputed domain name is either owned by or is related to itself. This, Complainant says, is the more so where the second element of the disputed domain name “Rugged Terrain” designates - as noted in paragraph 4.A.2.1 above - a specific type of tire developed by the Complainant. 5. A.2 Rights or Legitimate Interest
5.A.2.1. The Complainant’s case is that Respondent cannot on the facts demonstrate any of the circumstances set out in paragraph 4(c) of the Policy. First, Complainant has neither licensed nor otherwise authorised Respondent to use either of the BFGOODRICH or RUGGED TERRAIN T/A trademarks.
5.A.2.2. Second, because the disputed domain name is so confusingly similar to the well-known BFGOODRICH trademark, the Respondent cannot reasonably assert that it was intending to develop a legitimate activity through that domain name: Policy paragraph 4(c)(i).
5.A.2.3. Third, the Respondent is not commonly known by the disputed domain name: Policy paragraph 4(c)(ii). In that connection, the Complainant also cites decisions under the Policy where it has been held that no actual or contemplated bona fide use of a disputed domain name can reasonably be claimed in the absence of a license or permission to use a well-known trademark. The decisions cited are Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188 against Complainant’s AUCHAN trademark and LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138 and other domain names incorporating “lego” against Complainant’s well-known LEGO trademark.
5.A.2.4. Fourth, use of the disputed domain name to resolve to a pay-per-click site which contains links to products of the Complainant’s competitors (see, paragraph 4.B.1 above) is not a noncommercial or fair use of that domain name under paragraph 4(c)(iii) of the Policy. Decisions under the Policy cited are Markel Aspen, Inc. v. Whois Privacy Services Pty. Ltd. / Vertical Axis Inc., Domain Administrator,WIPO Case No. D2012-0602 against Complainant’s FIRSTCOMP trademark where the disputed domain name resolved to a pay-per-click site with links to products and services which competed with those of the Complainant: Carrefour S.A. v. Patrick Demestre,WIPO Case No. D2011-2248 against Complainant’s CARREFOUR trademark:WIPO Case No. D2010-0706 against Complainant’s GOWRINGS MOBILITY trademark and NAF Claim No. FA0211000132439 and others against Complainant’s CENTURY 21 mark, which was franchised to independently owned and operated real estate brokerage offices.
5.A.2.5.Finally, the Complainant asserts that using a privacy shield service as registrant of the disputed domain name in this case and in the numerous other cases under the Policy, where the respondent is respondent [see, paragraph 4.B.2 above] is behaviour which indicates lack of rights or legitimate interests. 5.A.3 Registered and Used in bad Faith
5.A.3.1.The Complainant’s case is that the circumstances of this case fall within paragraphs 4(b)(ii) and (iv) of the Policy. Registration in Bad Faith
5.A.3.2. First, the Complainant’s BFGOODRICH trademark is so well known that the Respondent could not have been unaware of it when registering the disputed domain name. The Complainant points to there being 5 dealers of BFGOODRICH tires in the State where the Respondent is located, namely Queensland. Ignorance of the Complainant’s trademark rights is still less plausible where the disputed domain name combines the well-known BFGOODRICH mark with is “Rugged Terrain T/A” tire. A trademark search would have identified both components of the disputed domain name and the Complainant’s registered trademarks. Equally, a single Internet search using GOOGLE would have also identified both marks as indicating products of the Complainant.
5.A.3.3. The Complainant cites decisions under the Policy where bad faith registration has been found where a disputed domain name is so obviously connected to a well-known trademark that its use by a party having no connection to such trademark suggests opportunistic bad faith. For example, LEGO Juris A/S v. store24hour,WIPO Case No. D2013-0091 against Complainant’s well-known LEGO trademark: LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling
WIPO Case No. D2008-0226 and 14 other domain names incorporating “lancome” against Complainant’s well known LANCOME trademark and Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464 against Complainant’s LA CAIXA trademark.
5.A.3.4. The Complainant also relies on the facts summarised in the preceding paragraph as constituting breach by the Respondent of its representation and warranty in paragraph 2 of the Policy and so establishing bad faith registration. In that respect, Complainant cites the decisions in Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART, WIPO Case No. D2009-0901 against Complainant’s well known DANONE trademark: Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 against Complainant’s CAROLINA HERRERA trademark for high-end fashion and fragrance products and Nike, Inc. v. B. B. de Boer,
WIPO Case No. D2000-1397 against Complainant’s well known NIKE trademark. Used in Bad Faith
5.A.3.5. The Complainant’s case is that a finding of bad faith follows where a respondent “knew or should have known” of the Complainant’s trademark rights but nevertheless registered a domain name in which he had no rights or legitimate interests. See, in that respect, Think Schuhwerk GmbH v. Soo Doo,WIPO Case No. D2012-2522 against Complainant’s THINK and THINK prefixed trademarks for shoes. As to suffixes “schute” means “shoes” in German and “fabrikverkauf” means “factory outlet” in German: O2 Holdings Limited v. Peter Davis,WIPO Case No. D2012-1866 against Complainant’s O2 trademark and L'AIR LIQUIDE Société anonyme pour l'Etude et l'Exploitation des Procédés Georges Claude v. NURINET,WIPO Case No. D2010-0122 against Complainant’s AIR LIQUIDE trademark.
5.A.3.6. On of the facts of this case, the Complainant says that the Respondent was, at all times, well aware of the substantial worldwide reputation of the BFGOODRICH trademark including in Australia. Notwithstanding, the Respondent has used the disputed domain name to resolve to a website both describing the Complainant’s products and also directing Internet users to competitor websites by pay-per-click links. This, the Complainant says, constitutes bad faith use under paragraph 4(b)(iv) of the Policy. The Complainant cites numerous decisions where bad faith use has been found on similar facts. Namely, F. Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956 against Complainant’s XENICAL trademark for its weight loss mediation: L'Oréal SA v. LV Kefeng,WIPO Case No. D2009-1231 and against Complainant’s well known L’OREAL and MAYBELLINE trademarks: Christian Dior Couture v. Chen Takong,WIPO Case No. D2013-0053 against Complainant’s famous DIOR trade mark: Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281 against Complainant’s BOUYGUES and ALSTOM trademarks, where it was held that no bona fide or legitimate use of the disputed domain names could be claimed: Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055 against Complainant’s GUERLAIN trademark for cosmetic products where a passive holding of the disputed domain name was nevertheless held to constitute bad faith use and MasterCard International Incorporated (“MasterCard”) v. Wavepass AS,WIPO Case No. D2012-1765 against Complainant’s MASTERCARD trademark.
5.A.3.7. Also on the facts of this case, the Complainant asserts a likelihood that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its BFGOODRICH and RUGGED TERRAIN T/A trademarks in a domain name; paragraph 4(b)(ii) of the Policy. Here, Complainant cites the decisions in L'oreal v. Chenxiansheng, WIPO Case No. D2009-0242 against Complainant’s famous L’OREAL trademark and Sanofi-aventis v. Adam Sanders,WIPO Case No. D2009-0171 against Complainant’s ACOMPLIA trademark for treatment of overweight and obese patients and also smokers who had previously tried, unsuccessfully, to give up smoking. Both decisions were rendered by the same panelist.
5.A.3.8. Finally, the Complainant says that registering a domain name masked by a privacy shield - as in this case - is indicative of bad faith when combined with other elements. The Complainant cites in this respect Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571 against Jay Leno, the American stand-up comedian, who claimed common law trade mark right in the name and mark JAY LENO, where use of privacy shield was held to constitute bad faith use when combined with use of the domain name to a linking portal for profit, which use was continued notwithstanding the Respondent having been put on notice of Complainant’s objections. Also cited is WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2, WIPO Case No. D2012-0033 against Complainant’s WSFS trademark for its banking services, where the panelist cited paragraph 3.9 of the “WIPO Overview 2.0” and applied it as “… another factor that point to a finding of bad faith registration and use … .” 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant has rights in the registered trademarks BFGOODRICH and RUGGED TERRAIN T/A. The former is a well-known mark.
6.6. In the Panel’s view the disputed domain name is confusingly similar to the BFGOODRICH mark above.
6.7 The Panel finds that the disputed domain name is also confusingly similar to both of the Complainant’s trade mark when used in combination in the form of that domain name.
6.8 In both respects, the Panel considers that Complainant’s case as summarised in paragraphs 5.A.1.3 to 5.A.1.6 is well made out. Consequently, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.9 The Panel finds that, on the facts, Respondent could not have established any of the circumstances indicating rights or legitimate interests in the disputed domain name set out in paragraph 4(c) of the Policy. The Complainant’s case is well made and, consequently, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.
6.10 The Panel notes that Markel Aspen, Inc. v. Whois Privacy Services Pty. Ltd. / Vertical Axis Inc., Domain Administrator,WIPO Case No. D2012-0602 cited by the Complainant (see, paragraph 5.A.2.4 above) is not, however, in point. There was no finding in relation to paragraph 4(a)(ii) of the Policy as the Complaint was dismissed for Complainant’s failure to establish a case under the first element of the Policy (paragraph 4(a)(i)). This does not, however, adversely affect the remainder of Complainant’s case under the second element of the Policy with which (as noted above) the Panel agrees. Registered and Used in Bad Faith
6.11 The Panel finds that Complainant has established its case under paragraph 4(b)(iv) of the Policy.
6.12 The Panel does not, however, find compelling the decisions cited with regard to paragraph 4(b)(ii) of the Policy and, consequently, makes no finding under that element of the Complaint; see, paragraph 5.A.3.7 above.
6.13 Nor does the Panel make a finding in relation to the element of the Complaint summarised in paragraph 5.A.3.8 above.
6.14 However, by reason of the finding in paragraph 6.11 above, the Complaint meets the third element of the Policy and Complainant is, consequently, entitled to the Remedy Requested. 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 cancelled.
David Perkins
Sole Panelist
Date: September 17, 2013
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