The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Llantas Supremas S.A. of Edo. de Mexico, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (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 8, 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 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2013.
On July 30, 2013, the Center received an email communication from the Respondent. On the same day, the Center acknowledged receipt of the Respondent’s email communication and invited the Complainant to submit a request for suspension of the proceeding. On August 1, 2013, the Complainant indicated that it did not wish to suspend the proceeding. Accordingly, the Center informed the parties on August 1, 2013, that the Center would proceed with panel appointment.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 7, 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 is a French company that owns the famous trademark MICHELIN which is largely protected in the world in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and maps publications.
In particular the Complainant is the owner of the Mexican trademark MICHELIN No. 139699, dated August 15, 1967, duly renewed and covering goods in class 12.
The disputed domain name was registered to the Respondent on August 21, 2012 and is currently resolving to the domain name , which domain name includes the Complainant’s competitor’s trademark. 5. Parties’ Contentions A. Complainant
The Complainant employs over 113,000 people and is present in more than 170 countries in the world, including in Mexico, where its affiliate, Industrias Michelin SA. de CV., is established and where it owns the domain name (registered on June 6, 2002 - Annex 15 to the Complaint).
A warning letter and three reminders were sent by the Complainant to the Respondent which is a tire wholesaler company and replied claiming its intention to do e-commerce with Michelin tires (Annex 9 to the Complaint). The Complainant then sent another letter to the Respondent (Annex 10 to the Complaint) to which the Respondent replied saying that it “could transfer” the disputed domain name but with “the corresponding payment”. The Complainant then offered to refund the registration fees (Annex 12 to the Complaint) but the Respondent did not reply to such offer.
The disputed domain name is, according to the Complainant, confusingly similar to the Complainant’s famous trademark MICHELIN, reproducing it in its entirety with the addition of the generic term “llantas” which means “tires” in Spanish, which is not sufficient to avoid any likelihood of confusion.
Furthermore the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
a) the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to register and use the MICHELIN trademark in the disputed domain name;
b) the disputed domain name is currently being redirected to the domain name which includes a Complainant’s competitor’s trademark;
c) it appears that the Respondent is a dealer of Pirelli tires, a competitor of the Complainant (Annexes 24 and 32 to the Complaint);
d) the Respondent is not commonly known by the name “Michelin”; and
e) the Respondent has not demonstrated use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
As to the registration of the disputed domain name in bad faith the Complainant asserts that it is implausible that the Respondent would be unaware of the Complainant at the time of registration of the disputed domain name given both the fame of its MICHELIN trademark as well as to the choice of the generic term “llantas” which is one of the main products to which such trademark is applied.
Moreover, given that the Respondent is a Mexican tire dealer representing one of the main Complainant’s competitors, it could not be unaware of the Complainant and its trademark, having registered the disputed domain name in bad faith and without any legitimate interest.
Lastly, also accordingly to the Complainant, the fact that the disputed domain name resolves to a Complainant’s competitor’s website if evidence of use of the disputed domain name in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. Once the Respondent’s default was notified, the Respondent sent an email to the Center stating that its intention was never to affect the Complainant or anyone else and that the Complainant could have the disputed domain name. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established rights in the MICHELIN trademark duly registered in the country where the Respondent is domiciled as well as in several countries around the world (Annex 13 to the Complaint).
The addition of the generic term “llantas” which means “tires” in Spanish only makes the disputed domain name even more similar to the Complainant’s trademark, creating a high risk of association by Internet users.
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established. B. Rights or Legitimate Interests
In view of the Respondent’s express recognition of its lack of rights or legitimate interests in the disputed domain name and affirmation that its intention was never to affect the Complainant, not opposing to the transfer of the disputed domain name, in addition to the circumstances that clearly indicate that the Respondent indeed lacked rights or legitimate interests in the disputed domain name (lack of affiliation or authorization to use the MICHELIN trademark; use of the disputed domain name to redirect users to what appears to be the Complainant’s competitor’s webpage; evident knowledge of the Complainant’s rights over its trademark in view of the field of activities exploited by the Respondent - tire wholesale), this Panel concludes that the second element of the Policy has also been met. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in connection with a domain name containing the trademark of one of the Complainant’s main competitors can indeed mislead Internet users for commercial gain by profiting from the confusing similarity between the disputed domain name and the Complainant’s mark.
The above in this Panel’s view constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s famous trademark and therefore evidences bad faith.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: August 20, 2013
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