The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Domain Proxy Manager, Domains By Proxy - Niche Proxy Account, of Zurich, Switzerland, represented by L, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2014. On February 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2014, 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 February 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2014. The Center received an email communication from the Respondent’s representative requesting it to “advise as to the Commencement Date for the UDRP noted below”. A part from this email query of March 7, 2014, no formal Response was received.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on March 24, 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 is a multinational company which operates worldwide, as a manufacturer of tires as well as publisher of hotel/restaurant guides and maps.
The Complainant’s Community Trademark MICHELIN with registration no. 004836359 and application date January 4, 2006 is registered in classes 01, 03, 05, 06, 07, 08, 09, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34 and 39.
The Complainant has registered a number of domain names under generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) corresponding to the trademark MICHELIN, such as, , and .
The Complainant has been using the trade name ViaMichelin for a wide range of services such as mapping, route plans, online hotel booking. The domain name used in connection with such services was created on November 7, 2000 which predates the registration of the disputed domain name.
The disputed domain name was registered on August 20, 2006. The Panel visited the disputed domain name on April 4, 2014, and observed that the disputed domain name resolves to a website requesting to download a software named “FLV Player”. The Annexes of the Complaint show that the disputed domain name previously resolved to a parking page displaying commercial links and random commercial websites such as pay-per-click websites.
As evidenced in the Annexes of the Complaint, on July 18, 2013, the Complainant has sent a cease-and-desist letter to the Respondent and requested the cancellation of the disputed domain name, to which the Respondent replied requesting USD 1,500 in exchange of the transfer of the disputed domain name to the Complainant. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(i) of the Policy, the Complainant requests that the disputed domain name be cancelled. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy. Identical or Confusingly Similar
The Complainant submits that its trademark MICHELIN and trade name ViaMichelin enjoys a worldwide reputation, and that, among others, it is the owner of the domain names and as evidenced in the Annexes of the Complaint.
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN and trade name ViaMichelin as it reproduces the Complainant’s trademark and trade name in its entirety which have been recognized as well-known by previous UDRP Panel decisions.
The Complainant cites Compagnie Generale des Etablissements Michelin, Michelin et Cie, Michelin Recherche et Technique S.A. v. Alvaro Collazo,WIPO Case No. D2004-1095 and Compagnie Générale des Etablissements Michelin v. Milan Kovac / Privacy--P,WIPO Case No. D2012-0634 in which the Panel acknowledged the Complainant’s trademark MICHELIN and trade name rights in ViaMichelin and its well-known status.
The Complainant further claims that the adjunction of the letter “”" at the end of “viamichelin” is taking advantage of the phenomenon of mistyping Internet addresses by Internet users, “typosquatting” and that the addition of the “.com” extension is not to be taken into consideration in examining the similarity between the Complainant’s trademark and the disputed domain name. Rights or Legitimate Interests
The Complainant states that the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to use and register its trademark. The Complainant further states that the Respondent has no prior rights or legitimate interests and is not commonly known by the name “Michelin” or “ViaMichelini”.
The Complainant notes that in previous UDRP decisions, panels have found that in the absence of any license or permission from the Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed and that there are no demonstrable preparations to use the disputed domain name in connection with bona fide offering of goods or services. The Complainant further claims that the disputed domain name is used for distribution of malware or hostile software which is clearly no bona fide offering of goods or services and that “typosquatting” does not constitute a legitimate use of a trademark.
The Complainant asserts that the Respondent’s reason for registering the disputed domain name was for selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name. Registered and Used in Bad Faith
The Complainant claims that the Respondent knew the Complainant’s trademarks at the time of registration of the disputed domain name and argues that registration and use of a domain name obviously connected with a well-known trademark by someone with no connection to the trademark suggests opportunistic bad faith.
The Complainant asserts that the addition of the letter “”" at the end constitutes “typosquatting” which has been recognized as evidence of bad faith registration per se by previous UDRP panels. The Complainant further asserts that bad faith is shown by the Respondent’s registration of the disputed domain name through a privacy shield to hide his identity.
The Complainant states that there is bad faith use of a domain name under UDRP when someone is using a domain name which is confusingly similar to a third party trademark in order to divert traffic for commercial gains using the goodwill built up by the owner of the trademark. The Complainant further asserts that the disputed domain name has been used for generating click through revenues and that the Respondent is taking undue advantage of the Complainant's trademark to generate profit.
The Complainant states that the Respondent has asked a large amount of money in exchange for the transfer of the disputed domain name which is an evidence of bad faith registration and use. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
As the Respondent has not filed a formal Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from the Respondent’s default, Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.
According to paragraph 4(a) of the Policy, the following three elements must be proven by the Complainant, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall 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 applicable. A. Identical or Confusingly Similar
The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the MICHELIN trademark.
The disputed domain name incorporates the Complainants trademark MICHELIN in its entirety with the addition of the letter “i”. The Panel is in the opinion that this is a “typosquatting” case where the disputed domain name is used to divert Internet traffic through a slight misspelling of the Complainant’s trademark. The disputed domain name not only comprises the Complainant’s trademark, but also it is virtually identical to Complainant’s trade name ViaMichelin and domain name with the addition of the letter “i” at the end, which is a typing error which may be made easily by Internet users. The practice of misspelling an element of a trademark, has consistently been regarded as creating domain names confusingly similar to the relevant mark in previous UDRP decisions. E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043.
The Panel further finds that the addition of the generic Top-Level Domain (gTLD) “.com” is typically irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189. The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. Once the Complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent.
The Respondent has failed to file a formal Response, therefore if the Complainant makes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the requirements of paragraph 4(a)(ii) of the Policy are fulfilled.
The Complainant claims that the Respondent is not affiliated with the Complainant and it has never been authorized by the Complainant to use or to register a domain name incorporating the Complainant’s trademark MICHELIN; the Respondent has no prior rights or legitimate interests and is not commonly known by the name; there is no actual or contemplated bona fide or legitimate use of the disputed domain name and that there are no demonstrable preparations to use the disputed domain name in connection with bona fide offering of goods or services. The Complainant alleges that the Respondent’s reason for registering the disputed domain name was for selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name.
The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the disputed domain name. The Panel accepts that the Respondent is not commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.
The Panel visited the disputed domain name on April 4, 2014 and found that the disputed domain name resolves to a website requesting to download a software named “FLV Player”. The annexes of the Complaint show that the disputed domain name previously resolved to a parking page displaying commercial links and random commercial websites such as pay-per-click websites. Therefore, the Panel finds that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.
There is no evidence that the Respondent has made any effort or has any intention to use the disputed domain name for any purpose or legitimate activity consistent with having rights or legitimate interests. Therefore, the Panel infers that there is no intention of legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent did not submit a formal Response and therefore the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirements of 4(a)(ii) of the Policy are fulfilled and consequently the Panel finds in favor of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant’s registration of its trademark MICHELIN and domain name predates the registration of the disputed domain name. Further, as stated in previous decisions issued under the Policy, the Complainant is well-known and widely recognized around the world, Compagnie Generale des Etablissements Michelin, Michelin et Cie, Michelin Recherche et Technique S.A. v. Alvaro Collazo,WIPO Case No. D2004-1095, Compagnie Générale des Etablissements Michelin v. Milan Kovac / Privacy--P,WIPO Case No. D2012-0634. As the Complainant’s trade name which is incorporated in the disputed domain name was registered and used well before the Respondent’s registration of the disputed domain name, the Panel is of the opinion that it is highly unlikely that the Respondent was unaware of the Complainant’s trade name ViaMichelin at the time the disputed domain name was registered. Thus, the Panel finds that the Respondent must have been aware of the Complainant’s trademark at the time of registration. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226.
As evidenced in the Annexes of the Complaint, the disputed domain name has been used for pay-per-click websites and the Respondent has requested an amount exceeding its out-of-pocket expenses for the transfer of the disputed domain name. The Respondent has failed to reply to the Complainant’s assertions. Therefore, the Panel is convinced that, as the Complainant asserts, the Respondent’s intention was to derive commercial benefit from the disputed domain name either by selling the disputed domain name to the Complainant for a substantial sum of money, or by generating pay-per-click revenues. Advance Magazine Publishers Inc. v Marcellod Russo,WIPO Case No. D2001-1049
As discussed above, the Panel is of the opinion that this is a clear typosquatting case. It has been established in previous UDRP decisions that typosquatting itself is evidence of bad faith. ESPN, Inc. v. XC2,WIPO Case No. D2005-0444, E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D20061043.
After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element 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 cancelled.
Gökhan Gökçe
Sole Panelist
Date: April 7, 2014
Full & Egal Universal Law Academy