The Complainant is Michelin Recherche et Technique S.A. of Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Domain Admin, Private Registrations Aktien of Kingstown, Saint Vincent and the Grenadines / PrivacyP of Nobby Beach, Queensland, 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 November 22, 2013. On November 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 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 November 28, 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 December 2, 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 December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2013.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on February 10, 2014. 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 has been engaged in the field of automobile and tire manufacturing industries and also in the field of publishing hotel/restaurant guidebooks and maps. The Complainant has its UNIROYAL trademarks protected around the world including in Australia. The Complainant, inter alia, owns trademark registration for the mark UNIROYAL in Australia as follows:
Trademark: UNIROYAL
Registration number: 1353778
Registration date: March 10, 2010
Class of goods: 12
The disputed domain name was registered on August 25, 2013. 5. Parties’ Contentions A. Complainant
(i) the disputed domain name is confusingly similar to the Complainant’s registered trademark UNIROYAL in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith by the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In view of the Respondent’s failure to submit a response, the Panel decides this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint); see also Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Claim No. 0095095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence showing that it is the owner of the UNIROYAL trademark registration which predates the Respondent’s registration of the disputed domain name. The Complainant contends that it is the owner of a trademark registration in Australia for the UNIROYAL mark (Reg. No. 1353778, registered on March 10, 2010) and many other trademark registrations of or including the mark UNIROYAL. Annex 6 to Complaint.
The Panel finds that the Complainant’s registration of the UNIROYAL mark in Australia sufficiently establishes its rights in the mark pursuant to Policy, paragraph 4(a)(i). See Metropolitan Life Insurance Company v. Robert Bonds, NAF Claim No.0873143 (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy, paragraph 4(a)(i)).
The Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark UNIROYAL. It notes that the disputed domain name reproduces Complainant’s trademark in its entirety followed by a hyphen and with the mere addition of the generic and descriptive term “tires”. It further asserts that the term “tires” obviously refers to one of the activities of the Complainant which is connected to automotive and tire manufacturing products and/or services.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark especially in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.” The Panel holds that the Respondent’s addition of the descriptive term “tires” does not distinguish the disputed domain name from the Complainant’s mark under Policy, paragraph 4(a)(i).
The Panel also finds that the “.com” is descriptive suffix commonly used as a generic Top-Level Domain (“gTLD”), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the gTLD suffix “.com” in the disputed domain name does not have any impact on the avoidance of confusing similarity. See Research in Motion Limited v. Input Inc., Domain Manager, WIPO Case No. D2011-2197 finding “the use of the added descriptive word does not change the overall impression of the domain name.”
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
The Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names under the Policy, paragraph 4(a)(ii), and then the burden shifts to the Respondent to demonstrate it does have rights or legitimate interests. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant asserts that it has never granted any license or other permission to the Respondent to use the Complainant’s mark. It also contends that the Respondent has no prior rights or legitimate interest in the disputed domain name. It notes that the registration of the UNIROYAL trademark preceded the registration of the disputed domain name for years. (Annexes 1 and 6 to Complaint).
The Complainant contends that the disputed domain name is so identical to the well-known UNIROYAL trademark of the Complainant that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. The Complainant consequently submits that to the best of its knowledge, the Respondent is not commonly known by the disputed domain name.
The Panel finds that the Respondent has no connection or affiliation with the Complainant or its marks and has not received any license or consent, express or implied, to use the UNIROYAL mark in the disputed domain name or in any other manner. The Panel further finds that on the available record, it has been established that the Respondent has never been known by the disputed domain name. Therefore, the Panel agrees that the Respondent lacks rights or legitimate interests in the disputed domain name. See Harry Winston, Inc. and Harry Winston, S.A. v. h,WIPO Case No. D2008-1266 (finding that respondent had not established rights or legitimate interests pursuant to the Policy, paragraph 4(c)(ii) in the domain name where there was no evidence that the respondent was commonly known by the domain name); see also Alstom v. Yulei,WIPO Case No. D2007-0424 (finding that respondent had not established rights or legitimate interests in the domain name where there is no indication that respondent is commonly known by the domain name and/or is using the domain name in connection with a bona fide offering of goods or services).
The Complainant also contends that the disputed domain name resolves to a parking page with pay-per-click links which are likely to generate revenues, and thus it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that nor is such use a legitimate noncommercial or fair use.
The Complainant further submits that the Respondent registered the disputed domain name with a privacy shield service to hide its identity and prevent the Complainant from contacting it, and thus such a behavior highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel agrees that this is further evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Under the circumstance that the Respondent did not reply and that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, the Panel concludes that the second element of the Policy, paragraph 4 has been established. See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701. C. Registered and Used in Bad Faith
The Complainant contends that it is impossible that the Respondent was unaware of the Complainant when it registered the disputed domain name in light of the fact that the Complainant and its trademark UNIROYAL enjoy a long history (Annex 3 to Complaint) and a worldwide reputation (Annex 8 to Complaint). It further contends that in light of the reputation of the Complainant’s UNIROYAL trademark, the Respondent’s reproduction of the trademark in its entirety, combined with the generic term “tires” related to one of the main products of the Complainant, clearly proves that the Respondent was aware of the existence of the Complainant’s trademark. The Complainant also submits that bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith.
In light of the notoriety of the Complainant’s trademark the Panel infers that the Respondent registered the disputed domain name for the purpose of using it in some way to attract for commercial gain users to its website by creating a likelihood of confusion with the Complainant’s trademark.
The Panel finds that it is inconceivable that the Respondent was unaware of the Complainant’s rights in the UNIROYAL mark, in that it is unlikely that the Respondent would have registered the disputed domain name unless it was aware of the existence of the trademark UNIROYAL and that the disputed domain name might be of some type of economic advantage to the Respondent. See The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.
Given the reputation of the UNIROYAL trademark, the Panel agrees that the Respondent’s bad faith registration is inferred. See LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226; and Caixa D’Estalvis I Pesions de Barcelona (“La Caixa”) v. Eric Adam, Supra.
The Complainant submits that in light of the Respondent’s knowledge of the Complainant’s mark at the time of its registration of the disputed domain name, the Respondent uses the disputed domain name to direct Internet users to a webpage displaying pay-per-click links which are likely to generate revenues. It further asserts that the use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the Policy. The Complainant also asserts that the Respondent uses the disputed domain name to direct Internet users to a webpage displaying commercial links related to automotive products and/or services, including tires and notably those of the Complainant and its competitors. The Panel agrees that the disputed domain name resolves to a website displaying commercial links related to automotive products and/or services, including tires and notably those of the Complainant and its competitors. Annex 1 to Complaint.
The Panel finds that such activities are disruptive to the Complainant’s business and therefore conclusive evidence that the Respondent registered and is using the disputed domain name in bad faith. The Panel further notes that the website does not appear to disclose the Respondent’s relationship with the Complainant. The Panel holds that the Respondent’s use of the well-known trademark of the Complainant to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the Policy. See F Hoffmann-La Roche AG v.Anna Valdieri,WIPO Case No. D2007-0956; L’Oréal SA v. LV kefeng,WIPO Case No. D2009-1231; and Alstom v. FM Laughna,WIPO Case No. D2007-1736.
For all of the above considerations, the Panel finds that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to the website resolved by the disputed domain name, making them believe that the website is associated with or recommended by the Complainant. The Respondent is therefore illegitimately capitalizing on the goodwill of the Complainant’s mark.
As such, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. 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.
Ho-Hyun Nahm, Esq.
Sole Panelist
Date: February 19, 2014
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