Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Pacharapatr W. of Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2016. On December 6, 2016, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by e-mail to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 9, 2017. 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 is one of the world’s leading tire manufacturers. According to Complainant, it “is dedicated to sustainably improving the mobility of goods and people by manufacturing and marketing tires for every type of vehicle, including airplanes, automobiles, bicycles/motorcycles, earthmovers, farm equipment and trucks.” Complainant also “offers electronic mobility support services on ViaM and publishes travel guides, hotel and restaurant guides, maps and road atlases.”
Complainant has created a network of commercial agencies including Italy (1901), Germany (1902), Switzerland (1902), Spain (1904), United States of America (1904) and England (1905), and has operations in Europe, North America and Asia.
Tyreplus is described by Complainant as “an authorized and preferred dealer of Michelin” tires. According to Complainant, Tyreplus is “a network of professional independent tyre retailers offering high quality products and automotive services at competitive prices”. Complainant alleges further that “Tyreplus centers operate in various parts of the world including Thailand where it offers a wide range of tyres and related products as well as a high level of customer service”. According to Complainant, Tyreplus centers are located in Thai cities Bangkok (Respondent’s city), Udon Thani, Samut Prakan, Nonthaburi, Nakhon Ratchasima, Chiang Mai, and Chon Buri.
Complainant holds several registrations for the TYREPLUS mark, including a mark registered in Thailand in July 2002 for “tyres and inner tubes for vehicle wheels”, among other goods. Complainant also operates a website for consumers in Thailand at the domain name .
The Domain Name was registered on July 15, 2015. It does not resolve to an active website.
On September 20, 2016, Complainant sent a cease-and-desist letter to Respondent asking Respondent to transfer the Domain Name to Complainant. Despite a few follow-up e-mails from Complainant, Respondent never responded. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established all three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights, through registration and use, in the mark TYREPLUS. The Panel further concludes that the Domain Name is confusingly similar to the TYREPLUS mark. If one ignores the “dot” between the Second-Level Domain (“tyre”) and the Top-Level Domain (“plus”), the mark and the Domain Name are identical. In most cases under the Policy, the Top-Level Domain (“TLD”) is ignored when considering confusing similarity. In recent years, however, and particularly with the emergence of numerous new TLDs, panels in certain circumstances have deemed it appropriate to consider the text on “both sides of the dot” when addressing the “confusing similarity” issue. See, e.g., WeWork Companies, Inc. v. Michael Chiriac, Various Concepts Inc.,WIPO Case No. D2016-1817; Tesco Stores Limited v. Mat Feakins,WIPO Case No. DCO2013-0017; and Première Vision contre Pierre-Olivier Fluder,WIPO Case No. D2014-2036 (domain name held confusingly similar to TESCO mark). See also MOD Super Fast Pizza, LLC v. Registration Private, Domains By Proxy, LLC / Ken Thorn,WIPO Case No. D2016-1568 .
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward, either in response to a cease-and-desist letter and several follow-up e-mails or in response to the Complaint in this proceeding, to explain any possible bona fides. The Domain Name resolves to a blank website.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The panel in another case involving this Complainant and the TYREPLUS mark concluded that the TYREPLUS mark is “well-known”. Compagnie Générale des Etablissements Michelin v. Private registration / Nigel Chynoweth,WIPO Case No. D2013-1167 (transferring ). In the present case, there is evidence in the record of Complainant’s marketing presence in Thailand, and even a physical location in Bangkok, Respondent’s city. Under these circumstances, and consistent with the Chynoweth case noted above, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name.
Also like the Chynoweth case, Respondent here has made no use of the Domain Name. Nor has Respondent denied knowledge of the TYREPLUS mark. Finally, Respondent has not bothered to respond to a series of communications from Complainant or to this Complaint. Under similar circumstances, the Chynoweth panel applied the principles of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, to conclude that Respondent’s “passive holding” of the subject domain name constituted use in bad faith under the Policy.
Apart from the fact that the respondent in Chynoweth took active steps to conceal his identity, and Respondent here apparently did not, the facts here closely resemble those of the Chynoweth case. In the Panel’s view, the same result should obtain here.
Complainant has established 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: January 13, 2017
Full & Egal Universal Law Academy