The Complainants are Compagnie Générale des Etablissements Michelin, Michelin Recherche et Technique S.A. of Clermont-Ferrand, France and Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Premium Anvelope Service-Roti S.R.L, Budisteanu Serban of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (the Registrar) and the disputed domain name is registered with ROTLD - INSTITUTUL NATIONAL DE CERCETARE-DEZVOLTARE ÎN INFORMATICA (the Registry) (commonly the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2015. On April 27, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain name. On April 28, 2015, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 30, 2015, the Center informed the Parties that the Complaint had been submitted in English whereas the language of the registration agreement for was Romanian. The Center requested the Complainant to provide with (1) satisfactory evidence of an agreement between the Complainants and the Respondent to the effect that the proceedings should be in English; or (2) submit the Complaint translated into Romanian; or (3) submit a request for English to be the language of the administrative proceedings. On May 4, 2015, the Complainants confirmed that English was the requested language. The Respondent did not reply.
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 May 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2015.
The Center appointed Marilena Comanescu as the sole panelist in this matter on June 18, 2015. 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.
Although the language of the Registration Agreement for one of the disputed domain names, , is Romanian, at the Complainants’ request and based on paragraph 11 of the Rules, the Panel hereby decides that the language of this proceeding be English particularly because the Respondent seems to be familiar with this language as it registered the other two disputed domain names, and , using English to conclude the corresponding Registration Agreements and because the Respondent did not object to Complainant’s request for English. As such, the Panel finds that it is fair for both Parties to have the proceeding conducted in English as the Respondent is able to understand and communicate in such language and the Complainants are not bound to incur further costs with the translation of the relevant documents. 4. Factual Background
The Complainants are part of the same group, Michelin Group, and claim to be a leading tire company having its headquarters in Clermont-Ferrand, France. Inter alia, the Complainant manufactures and sells tires for many type of vehicles including airplanes, farm equipment, bicycles and trucks.
The first Complainant claims to have presence in more than 170 countries, about 111,200 employees and 67 production plants in 17 different countries, including in Romania where the Respondent is located.
Complainants began its operations in Romania in 2001, at present having three factories, its trading network and about 3,000 employees.
The Complainant also claims that Michelin Group acquired from the BFGoodrich corporation, an American tire manufacturer, the trademark BFGOODRICH which currently belongs to Michelin Recherche et Technique S.A., the second Complainant.
The Complainants are the owners of numerous trademark registrations for MICHELIN, including the Community Trademark Registration No. 004836359 of January 4, 2006 covering goods and services in classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34 and 39, including tires.
The Complainants also own the Romanian trademark registration for BFGOODRICH, trademark No. 009922A granted on July 4, 2003 for goods in class 12.
The Complainants hold various domain names reproducing the trademarks MICHELIN and BFGOODRICH, such as , , and .
The Respondent has chosen not to submit any Response to the contentions raised in the Complaint.
The disputed domain names and were registered on January 20, 2013; the disputed domain name was registered on January 9, 2013. 5. Parties’ Contentions A. Complainant
The Complainants contend that the disputed domain names are confusingly similar to its famous trademarks MICHELIN and BFGOODRICH; that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent registered and is using the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
In view of the default and the absence of any reply to the Complaint by the Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants hold worldwide trademark registrations for the MICHELIN trademark in connection with many goods and services, including tires. The Complainants are one of the world’s leading tire producers. The disputed domain names and include the Complainant’s trademark MICHELIN and the generic term “anvelope”, the Romanian word for “tires”. This Panel agrees with the majority view of UDRP panels1 , that the addition of merely generic and descriptive terms, added either singly or collectively, to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. To the contrary, adding a generic term related to Complainants’ field of activity increases the likelihood of confusion.
Further, the disputed domain name reproduces Complainants’ BFGOODRICH trademark in its entirety, intersected by a hyphen. It is well established in decisions under the UDRP that the presence or absence of spaces and characters (e.g., hyphens, dots) in a domain name and indicators for generic Top-Level Domains (e.g., “.com”, “.info”, “.net”, “.ro”, “.it”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain names , and are confusingly similar to the Complainants’ trademarks MICHELIN and BFGOODRICH, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainants assert that it has given no license or other right to use or register its trademarks to the Respondent, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or a bona fide offering of goods and services. In line with the previous UDRP decisions, the Panel accepts that the Complainants have provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain names, and the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainants’ allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names , and , pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The trademark MICHELIN is registered in the name of the first Complainant and is used for decades for tires and since at least 2001 in Romania where the Respondent is located and enjoys a high reputation worldwide, as found by several previous UDRP panels, see, for example, Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu,WIPO Case No. D2014-1240; Compagnie Générale des Etablissements Michelin v. Michel Wijkstra,WIPO Case No. D2015-0751 and Compagnie Générale des Etablissements Michelin v. Milan Kovac / Privacy--P, WIPO Case No. D2012-0634.
The disputed domain names and were created in 2012 and incorporate the MICHELIN trademark and the generic term “anvelope”, the Romanian word for “tires”.
The Complainants’ trademark BFGOODRICH is registered in Romania in the name of the second Complainant since 2003 also is well-known throughout the world, as found by several panels in other cases involving the Complainant, see for example Michelin Recherche et Technique S.A. v. EAC International CO., Limited,WIPO Case No. D2013-1210; Michelin Recherche et Technique S.A. v. A Domain Privacy / Transure Enterprise Ltd, Host Master,WIPO Case No. D2013-0430 and Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S.A. v. Eijiobara Obara,WIPO Case No. D2012-0047.
The disputed domain name was created in 2013.
Accordingly, it is not difficult for this Panel to infer that indeed the Respondent had knowledge of the Complainants’ trademarks and business and the disputed domain names were registered with the Complainant’s trademarks in mind and that the aim of the registrations was to take advantage of the confusion between the disputed domain names and Complainants’ rights.
Further, at the time of filing the Complaint, the disputed domain names and resolved to inactive pages. Nevertheless, this state of inactivity does not mean that the domain names are used in good faith.
According to the majority view of UDRP panels2 , “with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, UDRP panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed (…)”.
In the present case, indeed the Complainants’ trademark is highly distinctive and enjoys international recognition and Respondent did not provide arguments for choosing and keeping inactive the disputed domain names.
The disputed domain name resolves to a webpage that copies the look and feel of Complainant’s official website , without Complainants’ approval whatsoever. This fact supports the inference that the purpose of the Respondent’s diversion of traffic from the Complainant to itself is for the Respondent’s own commercial gain, in the same time being likely to damage the Complainants’ business and reputation. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent did not respond to Complainants’ Cease and Desist letters sent before commencing the present procedure or to the present Complaint although the hard copy of the Complaint was delivered to Respondent, according to the information available on the courier’s website. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain names.
For the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names , and in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 names , and be transferred to the Complainant.
Marilena Comanescu
Sole Panelist
Date: July 2, 2015
1 See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 See paragraph 3.2 of the WIPO Overview 2.0.
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