The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Ertan Aslantas of Istanbul, Turkey, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with IHS Telekom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2016. On October 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2016, 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 and noting that the language of the Registration Agreement is in Turkish.
Pursuant to the Complaint submitted in English and the registrar verification dated October 19, 2016 stating that Turkish is the language of the Registration agreement, on October 20, 2016, the Center requested that the Parties submit their comments on the language of the proceeding. On October 21, 2016, the Complainant submitted its request for English to be the language of the proceeding, by reference to the Complaint. On November 25, 2016, the Respondent submitted its request for Turkish to be the language of the proceeding.
On October 21, 2016, the Respondent sent an email to the Center stating he was willing to transfer the disputed domain name to the Complainant free of charge and following this email, the Complainant requested that the proceeding be suspended for settlement negotiations between the Parties. On October 24, 2016, the Center suspended the proceeding until November 23, 2016. On October 24, 2016 the Respondent sent further emails to the Center stating that he is still willing to transfer the disputed domain name to the Complainant, however inquired if he would be able to get the registration fee from the Complainant by the enforcement of the Center. On November 22, 2016, the Complainant requested that the proceeding be reinstituted, since the Responded failed to sign the settlement agreement. On November 23, 2016, the Center reinstituted the proceeding.
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 and 4, the Center formally notified the Respondent in both English and Turkish of the Complaint, and the proceedings commenced on November 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2016. On December 5, 2016, the Respondent submitted its Response in Turkish. On December 6, 2016, the Respondent confirmed that its Response dated December 5, 2016 may be regarded as its final and complete Response.
The Center appointed Uğur G. Yalçıner as the sole panelist in this matter on December 9, 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
The Complainant is a large tire manufacturing company with headquarters in Clermont-Ferrand, France. The Complainant has a long-term presence in the Turkish tire market and founded “Michelin Tires Ticaret AS” in 1996 to market and distributes light trucks, heavy duty trucks, agricultural, construction machinery and forklift tires through more than 300 networks of dealers.
The Complainant owns the following trademark registrations for MICHELIN trademark:
- MICHELIN International Trademark No. 348615, registered on July 24, 1968, covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20.
- MICHELIN Turkish Trademark No. 134240 registered on July 28, 1992 duly renewed that covers goods and services in classes 1, 6, 7, 8, 9, 11, 12, 14,16, 17, 20, 21, 23, 25, 26, 27, 28 and 34.
The Complainant also registered domain name on October 6, 2005 to promote its services in Turkey.
The Respondent registered the disputed domain name on June 15, 2016 and at the time of this decision the disputed domain name did not resolve to an active webpage.
On July 18, 2016, the Complainant sent a cease-and-desist letter to the Respondent via email and registered mail based on its trademark rights. The cease-and-desist letter requested the Respondent to transfer the disputed domain name to the Complainant free of charge. The Respondent replied and asked about the amount the Complainant was willing to reimburse for the registration of the disputed domain name. The Complainant refused to pay for the transfer of the domain name. The proceeding was suspended for settlement discussions but since the Respondent failed to sign the settlement agreement, the proceeding was reinstituted by the Center at the Complainant’s request. 5. Parties’ Contentions A. Complainant
The Complainant’s assertions may be summarized as follows:
(i) Identical or Confusingly Similar
The disputed domain name is identical or at least confusingly similar to the Complainant’s MICHELIN trademark and the addition of the generic Top-Level Domain (gTLD) “.istanbul” does not eliminate the confusing similarity between the Complainant’s registered MICHELIN trademark and the disputed domain name.
The Complainant has been using the MICHELIN trademark in connection with a wide variety of products and services around the world including in Istanbul, Turkey. Therefore, Internet users are, inter alia, likely to wrongly identify the disputed domain name as the Complainant’s domain name registered for the Complainant’s activities in Istanbul as the head office of its Turkish subsidiary is also located there. Further, several prior UDRP panel decisions have regarded the MICHELIN trademark to be “well-known” or “famous”.
(ii) Rights or legitimate interests
The Complainant states that the Respondent is not affiliated with the Complainant nor has it been authorized to use and register its trademarks, or to seek registration of any domain name incorporating the MICHELIN trademark. The Respondent did not demonstrate use of or demonstrable preparations to use the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services.
Furthermore, the Complainant alleges that the Respondent has registered the disputed domain name for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name.
(iii) Registration and Use in Bad Faith
According to the Complainant, the disputed domain name was registered and is being used in bad faith.
The Complainant states that the Respondent was well aware of the Complainant’s MICHELIN trademark when the disputed domain name was registered since the Complainant is well known throughout the world including Turkey – the home country of the Respondent.
The Complainant contents that the Respondent’s offer to sell the domain name which is in excess of the Respondent’s out-of-pocket expenses is also a clear evidence of registration and use in bad faith.
The Complainant also asserts that because the Respondent, who had no rights or legitimate interests in the Complainant’s MICHELIN trademark, knew or should have known about the Complainant’s rights, bad faith can be found. The Complainant claims it is likely that the Respondent registered the domain name to prevent the Complainant from using its trademark in the disputed domain name. The Complainant further argues that passive holding of the disputed domain name can satisfy the requirements of paragraph 4(a)(iii).
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent submitted its Response in Turkish on December 5, 2016. The Respondent’s assertions may be summarized as follows:
- The Complainant seeks to obtain the disputed domain name based on its trademark rights but is a Turkey-based domain name and the Respondent paid a registration fee in order to register this domain name.
- The Complainant rejects to reimburse the registration cost of the disputed domain name however initiates the UDRP case and undertakes the cost of the dispute which can be deemed as an inconsistent behavior of the Complainant.
- If the Panel orders to transfer the disputed domain name to the Complainant, it would be unfair since the Complainant would get the disputed domain name without paying any fees.
- The Respondent demands the rejection of the Complaint.
On December 6, 2016, the Respondent confirmed that he had submitted his final Response as noted above and he did not further respond as to the Complainant’s allegations cited in Section 5.A. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received from the Registrar, the language of the registration agreement for the disputed domain name is Turkish. The Complainant has requested that English be the language of the proceeding whereas the Respondent requested that Turkish be the language of the proceeding.
Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
It is established practice to determine the language of the proceeding to ensure fairness to the parties and maintain inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593. In this case, the Panel notes that the email communications between the Parties have been sent in English, which suggest it is likely that the Respondent can understand English or at least is able to translate documents from/to English/Turkish. On the other hand, the Complainant, which is not proficient in Turkish, will have to incur considerable expenses if it is forced to translate the Complaint into Turkish. Moreover, translating the Complaint into Turkish will lead to undue and unnecessary burden and delay the resolution of this dispute . Under these circumstances, the Panel decides to hold the proceeding in English in accordance with paragraph 11(a) of the Rules.
Additionally, the Panel is familiar with both English and Turkish and able to consider the Response submitted in Turkish by the Respondent. 6.2. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Panel accepts that the Complainant’s MICHELIN trademark is internationally well-known and the Complainant has established that it is the registered owner of various trademark registrations for its MICHELIN trademarks.
The Panel furthers finds that the disputed domain name is confusingly similar to the MICHELIN trademark since it wholly incorporates the Complainant’s trademark. As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy (e.g., EAuto, L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096, Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, and Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046).
It is well accepted that the gTLD is typically disregarded when assessing confusing similarity. Disregarding “.istanbul”, the Panel notes that the disputed domain name is identical to the Complainant’s mark.
Moreover, Istanbul is where the headquarter of the Complainant’s Turkish subsidiary is found. Therefore the Panel concludes that the addition of “.istanbul” may create an association with the Complainant in the minds of Internet users because it references the city in which the Complainant also operates.
In the light of the above, the Panel finds that the disputed domain name is identical to the trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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.”
The Panel confirms that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to assert any rights or legitimate interests in the disputed domain name and he did not present any concrete evidence to support his legitimate interests or rights in the disputed domain name, merely that he wanted compensation for the disputed domain name. In this regard, the Panel finds that the Respondent has not established rights or legitimate interests in the disputed domain name.
The Panel also notes that the disputed domain name does not resolve to an active website and this further shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, the Panel concludes that the second element of the Policy is satisfied. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith.
Firstly, it is likely that the Respondent had actual knowledge of the Complainant’s trademark given that he chose to register a domain name identical to the Complainant’s mark, and besides that, his domicile is in Turkey where the Complainant’s trademark is well-known. Accordingly, the Panel draws the conclusion that the Respondent knew of the Complainant, its products/services and its trademark at the time of the registration of the disputed domain name. (See the examples where the respondent’s knowledge of the complainant’s mark at the time of registration of the domain name suggests bad faith: Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Document Technologies v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270).
Secondly, passive holding of the disputed domain name coupled with the fame of the Complainant’s MICHELIN trademark does not avoid a bad faith finding. “It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).” Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273.
The Respondent also argues that the Complainant is seeking to obtain the disputed domain name without making any payment to the Respondent. The Panel is in the opinion that the Complainant is entitled to rely on its rights under the Policy to obtain transfer of the disputed domain name if it can prove the three elements set out.
Finally, the Respondent has not explained why he registered the disputed domain name or in his Response answered to any of the allegations put forth by the Complainant.
Given the foregoing, the Panel finds that the disputed domain name was registered and used 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.
Uğur G. Yalçıner
Sole Panelist
Date: December 23, 2016
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