Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & Associés, France.
Respondent is Ivan Toplij, Poste Restante of Prague, Czechia. 2. The Domain Name and Registrar
The disputed domain name is registered with Gransy, s.r.o. d/b/a (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 27, 2016. On December 27, 2016, the Center sent the Registrar an email requesting a registration verification on the disputed domain name. On January 4, 2017, the Registrar replied the Center the email with its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on January 9, 2017, to correct an administrative formality.
The Center verified that the Complaint and the amendment to the Complaint, satisfied both 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 January 11, 2017. In accordance with the Rules, paragraph 5, the due date for a Response was January 31, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 1, 2017.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on February 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 leading tire companies of the world and 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. It also offers electronic mobility support services on "" and publishes travel guides, hotel and restaurant guides, maps and road atlases.
Also, Complainant presented evidence of ownership of the following MICHELIN trademark registrations: the European Union trademark MICHELIN No. 001791243, registered on October 24, 2001, duly renewed and covering goods in classes 6, 7, 12, 17, 28; the European Union trade mark MICHELIN No. 009914731, registered on September 27, 2011, covering services in classes 9, 35, 37, 38, 39, 41, 42, 43; and the International trade mark MICHELIN No. 348615, protected in Czechia, registered on July 24, 1968, duly renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20.
In addition, Complainant has registered and is using the domain names , registered on December 1, 1993, and , registered on December 12, 1997. Complainant is also active in the Czechia, through their website "www." dedicated to Czech consumers.
The disputed domain name was registered on March 30, 2016 by Respondent. The disputed domain name resolves to a website displaying sponsored links relating to Complainant's business activities.
In order to try to solve this matter amicably, Complainant sent on October 6, 2016, a cease-and-desist letter to Respondent via registered post and email based on its trademark rights but Respondent did not reply.
As no amicable settlement could be reached, Complainant has decided to initiate a UDRP proceeding against Respondent. 5. Parties' Contentions A. Complainant
Complainant claims that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (Policy, Paragraph 4(a)(i)) with the following arguments:
Complainant has established that it has registered the trademark MICHELIN in several jurisdictions and has presented proof thereof.
Complainant has registered the domain names and in order to promote its services in different countries, such as in Czechia.
Complainant argues that the disputed domain name is identical or at least confusingly similar to Complainant's trademark MICHELIN, because the disputed domain name substantially reproduces Complainant's trademark. Complainant also argues that that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the disputed domain name is identical or confusingly similar to Complainant's registered trademark.
According to Complainant, the disputed domain name reproduces the trademark MICHELIN with the addition of the term "tenjin", which means "heavenly gods" in Japanese. The term "tenjin" does not dispel any likelihood of confusion. Internet users are thus likely to believe that the disputed domain name is endorsed by Complainant. The generic Top-Level Domain ("gTLD") ".com" does not add any distinctiveness to the disputed domain name.
Complainant argues that by registering the disputed domain name, Respondent created a likelihood of confusion with Complainant's trademark. There is a high probability that the disputed domain name will mislead Internet users into thinking that it is, in some way, associated with Complainant. Internet users may thus wrongly believe that the disputed domain name is endorsed by Complainant and that they will be directed to an official site of Complainant, which is not correct.
Complainant finally concludes that the disputed domain name is identical or confusingly similar to the trademark MICHELIN in which Complainant has rights, and therefore the condition of paragraph 4(a)(i) is fulfilled.
Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name according to the Policy, paragraph 4(a)(ii).
According to Complaint, Respondent is not associated or affiliated with Complainant in any way. Also, Complainant argues that Respondent has not been authorized or given any license to use and register its trademark, or to seek registration of any domain name incorporating the trademark MICHELIN, which was reproduced as part of the disputed domain name.
Complainant argues that Respondent has not used the disputed domain name for a bona fide offering of goods or services. To the contrary, Respondent has used the disputed domain name as a parking page displaying sponsored links related to Complainant's field of activity such as "Michelin Tires", "Michelin 205 55 R16" among others. Complainant also argues that Respondent is not using the disputed domain name in connection with a legitimate noncommercial or fair use because the disputed domain name has been used by Respondent as a parking page with sponsored links that generate revenues.
Complainant also argues that Respondent did not reply to Complainant's cease-and-desist letter and subsequent reminders and that Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.
According to Complainantthe disputed domain namewas registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Complainant argues that Respondent registered the disputed domain name in bad faith because it was aware of Complainant's trademark.
Complainant said that in the current days, with the useful tools of the Internet and advancement of information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of Complainant and its trademarks, as well as the high level of notoriety of Complainant, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademarks at the time of registration of the disputed domain name.
Furthermore, Respondent did not reply to the cease-and-desist letter and to the reminders sent by Complainant. Such behavior has already been considered as an inference of bad faith by previous UDRP panels.
Complainant argues that Respondent also uses the disputed domain name in bad faith because Respondent has no license or permission from Complainant to use such a widely-known trademark, and therefore no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.
According to Complainant's arguments and evidence presented in this case, the disputed domain name diverts users to a parking page displaying sponsored links to Complainant's field of activity, which is further proof of Respondent's bad faith.
Complainant also argues that it is more likely than not, that Respondent's primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of Complainant's trademark rights, through the creation of initial interest of confusion.
Complainant reaches the conclusion that Respondent both registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Consequently, Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
In this case, Complainant presented enough evidence of its trademark rights in MICHELIN. Complainant owns numerous MICHELIN trademark registrations in several jurisdictions around the world.
The disputed domain name incorporates Complainant's trademark in its entirety and combines it with the word "tenjin", which means "heavenly gods" in Japanese according to Complainant. In the Panel's opinion, combining an exact reproduction of a trademark with other words, even in other languages, does not avoid a finding of confusing similarity to Complainant's trademark. The Panel finds that the disputed domain name is confusingly similar to Complainant's trademarks, and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires Complainant to establish that Respondent has no rights or legitimate interests in the disputed domain name. The consensus view among UDRP panels is that once a complainant has made a prima facie case indicating the absence of the respondent's rights or legitimate interests in a disputed domain name, the respondent has the opportunity to come forward with evidence of such rights or legitimate interests. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Complainant has submitted that it is not affiliated or associated in any way with Respondent. Also, Complainant has established that it has not authorized or given any license to Respondent to use the trademark MICHELIN or include it in the disputed domain name, and that Respondent is not commonly known by the disputed domain name. Respondent has not rebutted these arguments or proven its rights or legitimate interests in the disputed domain name. Moreover, the use of the disputed domain name in connection with a website displaying sponsored links does not in the present case amount to a bona fide offering of goods or services.
The Panel finds that Complainant has made a prima facie case that has not been rebutted by Respondent. Therefore, the Panel finds that the second element of the Policy is fulfilled. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires Complainant to establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the 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 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 disrupting the business or 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 on-line 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."
Considering the worldwide reputation of Complainant's trademark MICHELIN, and considering that Complainant owns and operates a website at "www." dedicated to Czech consumers, Respondent must have been aware of the trademark at the time of registration of the disputed domain name, and therefore acted in bad faith when registering the disputed domain name.
According to Complainant's arguments and evidence presented in this case, the website "www." is a parking page displaying sponsored links to Complainant's field of activity. By using the disputed domain name, comprising Complainant's distinctive trademark, in connection with a parking page with links to goods and services relating to Complainant's industry, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant's trademark. This, in the Panel's view, constitutes bad faith use under the Policy.
In conclusion, the use of Complainant's well-known trademark to attract Internet users to a website for commercial gain constitutes use in bad faith, pursuant to paragraph 4(b)(iv) of the Policy. Based on the above, the Panel finds that the disputed domain name was registered and is being used in bad faith, and therefore the third element of the Policy is fulfilled. 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 Complainant.
Ada L. Redondo Aguilera
Sole Panelist
Date: February 21, 2017
Full & Egal Universal Law Academy