The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés of Paris, France.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Commonwealth of the Bahamas (“Bahamas”) / Ryan G Foo, PPA Media Services of Santiago, Chile. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Internet Domain Service BS Corp Internet Domain Service BS Corp TLD Registrar Solutions Ltd. (the “Registrar”). All three of the disputed domain names are referred to hereafter as the “Disputed Domain Names.” 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2016. On August 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 1, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 1, 2016 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 September 6, 2016.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 4, 2016. 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
Complainant states that it is “one of the leading tire companies”, with a presence in “in more than 170 countries”, 112.300 employees and 68 production plants in 17 countries. Complainant further states that its wholly owned subsidiary, ViaMichelin, “designs, develops and markets digital travel assistance products and services for road users in Europe”.
Complainant states, and provides evidence to support, that it is the owner of numerous trademark registrations that consist of or include the word “Michelin” (the “MICHELIN Trademark”), including International Reg. No. 348,615 (registered July 24, 1968) for use in connection with, inter alia, “air pumps and accessories therefor, vehicles, apparatus for locomotion by land, air or water, tires of all kinds and for all purposes, valves, repair kits, flaps, rims, deflation warning devices, wheels, wheel carriers, anti-skid spikes and studs for tires”.
The Disputed Domain Names were created on the following dates:
- : December 5, 2002
- : June 2, 2004
- : June 18, 2004
Complainant states, and provides evidence to support, that the Disputed Domain Names are being used in connection with websites that appear to be monetized parking pages, with links related to Complainant, maps and roads, among other things.
Complainant states, and provides evidence to support, that it attempted to contact the Respondent multiple times about the Disputed Domain Names, but that the Respondent never replied.
Finally, Complainant states, and provides evidence to support, that Respondent PPA Media Services has lost numerous proceedings under the Policy. 5. Parties’ Contentions A. Complainant
Complaint contends, in relevant part, as follows:
- The Disputed Domain Names are confusingly similar to the MICHELIN Trademark because, inter alia, “the disputed domain names substantially reproduce Complainant’s trademark in its entirety which previous panels have considered to be ‘well-known’ or ‘famous’” ; the “deleted letters do not significantly affect the appearance or pronunciation of the domain names”; and “an average Internet user who has an imperfect knowledge or recollection of the names, MICHELIN and ViaMichelin, might accidentally spell it with the omission of the above mentioned letters, merely because of the way the Complainant’s trademark is pronounced.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent is not affiliated with Complainant in any way nor has he been authorized by Complainant to use and register their trademarks, or to seek registration of any domain name incorporating said mark”; “Respondent did not demonstrate use of, or demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services”; “the disputed domain names , and resolve[] to a parking page displaying commercial links, and some of them are related to cartographic and/or automotive products and/or services, including maps as well as tires and notably those of Complainant and its competitors”; because the Disputed Domain Names “direct[] Internet users to a parking page with pay-per-clicks which are likely to generate revenues… it cannot be inferred that Respondent is making a legitimate non-commercial or fair use of disputed domain name[s]”; “Respondent has registered the disputed domain names with a privacy shield service to hide his identity and prevent Complainant from contacting him”; and “Respondent never answered to Complainant’s letter despite several reminder[s]”.
- The Disputed Domain Names were registered and are being used in bad faith because, inter alia, “[i]t is implausible that Respondent was unaware of Complainant when he registered the disputed domain names”; “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”; “a deliberate concealment of identity and contact information may in itself indicate registration in bad faith”; “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site”; “[t]he 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”; and “the use of a domain name to point to a website that offers sponsored links to other websites providing services or goods which are similar to those offered by a complainant’s own website is evidence of bad faith”. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the MICHELIN Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the MICHELIN Trademark, the relevant comparison to be made is with the second-level portion of these domain names only (i.e., “micelin”, “micheln” and “viamicelin”), as it is well established that the Top-Level Domain (i.e., “.com”) may generally be disregarded for this purpose. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“[t]he applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”)
Each of the Disputed Domain Names includes the MICHELIN Trademark in its entirety except for a single missing letter. The Panel agrees with the decision cited by Complainant, Mapfre S.A. y Fundación Mapfre v. Josep Sitjar,WIPO Case No. D2011-0692, where the domain name was found to be confusingly similar to the trademark MAPFRE, despite the absence of a single letter. There, the panel said that “merely eliminat[ing] the letter ‘p’ from the trademark […] is certainly not sufficient to exclude the confusingly similarity”.
Further, the Disputed Domain Name includes the additional word “via,” which is used by Complainant in connection with its ViaMichelin subsidiary. Therefore, the addition of “via” does nothing to alleviate confusing similarity. See, e.g., Yellow Corporation v. MIC,WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent is not affiliated with Complainant in any way nor has he been authorized by Complainant to use and register their trademarks, or to seek registration of any domain name incorporating said mark”; “Respondent did not demonstrate use of, or demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services”; “the disputed domain names , and resolve[] to a parking page displaying commercial links, and some of them are related to cartographic and/or automotive products and/or services, including maps as well as tires and notably those of Complainant and its competitors”; because the Disputed Domain Names “direct[] Internet users to a parking page with pay-per-clicks which are likely to generate revenues […] it cannot be inferred that Respondent is making a legitimate non-commercial or fair use of disputed domain name[s]”; “Respondent has registered the disputed domain names with a privacy shield service to hide his identity and prevent Complainant from contacting him”; and “Respondent never answered to Complainant’s letter despite several reminder[s]”.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s 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. Policy, paragraph 4(b).
In this case, Complainant in effect argues that bad faith exists pursuant to Policy paragraph 4(b)(iv), for the reasons set forth above.
Numerous panels have found the registration and use of domain names that are confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the domain names are associated with monetized parking pages that contain links for goods or services related to the complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Accordingly, the Panel finds that Complainant has proven 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 Names , and be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: October 17, 2016
Full & Egal Universal Law Academy