The Complainant is Michelin Recherche et Technique S.A. of Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is EAC International CO., Limited of Sydney, Australia. 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 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 the Respondent of the Complaint, and the proceedings commenced on July 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2013.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on August 23, 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 provided a list of the registered trademarks upon which its Complaint is based.
The Complainant, Michelin Recherche et Technique S.A., is a subsidiary of Compagnie Generale des Etablissements Michelin (“Michelin”). The Michelin Group acquired from the BFGoodrich corporation, an American tire manufacturer, the trademark BFGOODRICH. That trademark is currently a part of the Michelin Group trademarks and is owned by the Complainant. In particular, the Complainant is the owner of BFGOODRICH, Australian Trademark No. 306047, dated of April 4, 1977.
Michelin has operated in Australia for some 50 years.
The Respondent’s contact address is Sydney, Australia.
The disputed domain name was registered on January 12, 2013. 5. Parties’ Contentions A. Complainant
The Complainant states:
1. That it is a subsidiary of Michelin and that it 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.
2. The contact address of the Respondent is Sydney, Australia. Michelin operates in Australia through Michelin Pty Ltd, which was established in October 1997 to manage and develop markets in Australia, New Zealand and some of the Pacific Islands. Prior to this, the Michelin brand had been in Australia for the last 50 years through its importation by sales distributors.
3. 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. The Complainant's tires are used for rallies in Australia: for instance, they were used for the Australasian Safari of 2012, where Michelin won the race with one of its type of tires.
4. Some years ago, the Michelin Group acquired from the BFGoodrich corporation, an American tire manufacturer, the trademark BFGOODRICH. That trademark is currently a part of the Michelin Group trademarks and belongs to the Complainant.
5. For many years, BFGOODRICH has been involved in rallying and has distinguished itself. The competitive spirit gives the brand considerable edge. It is currently the world benchmark in all disciplines such as long-distance rallying.
6. It came to the notice of the Complainant that the domain name had been registered. Whois Database search revealed that this domain name was registered by the Respondent.
7. The disputed domain name combines the Complainant’s trademark BFGOODRICH and the generic term “tires”.
8. The disputed domain name resolves to a parking page displaying commercial links. Those links are not exclusively related to the automotive field, but the related researches links direct Internet users to commercial links related to automotive products, in particular tires of the Complainant and its competitors.
9. In addition, the parking website page stated: “The domain is listed for sale. Click here to inquire about this domain name.” Clicking through on that link directs the user to a webpage on which there is a form to fill out in order to enquire about the domain name for sale.
10. On May 22, 2013, representatives of the Complainant dispatched a cease-and-desist letter to the Respondent requesting the transfer of the domain name to the Complainant. The cease-and-desist letter requested Respondent to cease the use of the disputed domain name and to transfer it. On the same day, Respondent replied to the e-mail stating that the domain name was for sale for the sum of 900 EUR, a sum in excess of out-of-pocket expenses. Representatives of the Complainant stated that Michelin was not willing to pay any financial compensation for the domain name transfer and reminded the Respondent of its obligations as a domain name registrant to abide by the ICANNI Rules. The representatives of the Complainant once again reiterated the request for transfer of the domain name free of charge.
11. The Respondent again stated that the domain name was for sale. On June 15, 2013 the Respondent sent an email to the representatives of the Complainant asking; “How about the price of 900 EUR?”
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 disputed 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
The Respondent did not reply to the Complainant’s contentions. 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 or 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. A. Identical or Confusingly Similar
The Complainant has shown that it is the owner of the well-known trademark BFGOODRICH. The disputed domain name incorporates the Complainant’s mark in its entirety, simply adding the generic term “tires”. In Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0090, the panel stated that, “As numerous prior panels have held, 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.”
In this case the Panel finds that the addition of the word “tires” has no effect on the overall impression of the dominant part of the disputed domain name: “tires” (or “tyres”) is a non-distinctive term that is commonly used both in the commercial world and in everyday life. Indeed, the Complainant submits that the inclusion of the word "tires" as part of the domain name “is likely to cause further confusion as Complainant's trademark designates tires. We cannot but dwell on the fact that this aforementioned term ‘tires’ refers to the products of Complainant and the field of activity in which Complainant operates.”
Further, the addition of “.biz” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s mark: The addition is without legal significance since its use is technically required to operate a second level domain name relating to a bona fide business or commercial purpose.
Additionally, the Complainant points out that it is the owner of several domain names that incorporate the trademark BFGOODRICH: For example registered on August 15, 1996 and registered on June 19, 1997.
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 Respondent is not affiliated with the Complainant in any way nor has it 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 domain name: The BFGOODRICH Australian Trademark was registered in April 1977; the disputed domain name was registered in January 2013.
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 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, it is clearly established that, in relation to the second element of the Policy, 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 can answer better that 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 states 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 BFGOODRICH trademark are well-known throughout the world, including Australia.
Further, the Respondent’s exact reproduction of the trademark, combined with the addition of the word “tires”, shows that the Respondent was aware of the existence of the Complainant's trademark and of the Complainant’s main product. Use in bad faith
The Complainant says that disputed domain name resolves to a parking page displaying commercial links. Those links are not exclusively related to the automotive field, but the related links direct Internet users to commercial links related to automotive products: in particular tires of the Complainant and its competitors. The Respondent is therefore using the disputed domain name to direct Internet users to a webpage displaying pay per clicks links which are likely to generate revenue.
In relation to paragraph 4(b)(iv) of the Policy, UDRP panels have held that the use of a domain name confusingly similar to another’s trademark to divert Internet users and direct them to a webpage providing click- through revenues is evidence of bad faith. For example, in Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258, the panel stated that, whilst the intention to earn click-through-revenue is not in itself illegitimate, “the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.”
The Complainant also relies upon paragraph 4(b)(i) of the Policy in relation to the fact that the Respondent offered to sell the disputed domain name for a sum in excess of out-of-pocket expenses.
Again, it is appropriate to state that the Respondent was entitled to answer the Complainant’s arguments by serving a Response, but has chosen not to do so.
The Panel is satisfied that the Complainant has provided evidence of bad faith registration and use pursuant to paragraph 4(b)(i) and 4(b)(iv) the Policy, 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: August 30, 2013
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