The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Vasilii Polkover of Moscow, Russian Federation / Privacy Protection of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2017. On January 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2017, 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.
On January 17, 2017, the Center notified the parties in both English and Russian that the language of the Registration Agreement for the disputed domain name was Russian. On the same day, the Complainant requested for English to be the language of the proceeding, to which 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 and 4, the Center formally notified the Respondent of the Complaint, in both English and Russian, and the proceedings commenced on January 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 22, 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
The Complainant is one of the leading tire companies in the world which is headquartered in Clermont-Ferrand, France. The Complainant is also present on the Russian market.
The Complainant is, among others, the owner of the following trademark registrations:
- International trademark MICHELIN (No. 348615), dated of July 24, 1968, covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17, 20;
- International trademark MICHELIN (No. 1245891), dated of December 10, 2014, covering services in classes 35, 36, 39, 40,41, 44 and 45; and
- International trademark MICHELIN No. 517586, dated of September 24, 1987, covering goods and services in classes 9, 35 and 38.
The Complainant owns the domain name which is dedicated to the Russian market.
The disputed domain name was created on June 2, 2016. The disputed domain name resolves to a parking page of the Registrar.
On July 5, 2016, the Complainant sent a cease-and-desist letter to the privacy shield service “Privacy Protection” via registered letter and email to obtain the identity and contact details of the registrant of . The Registrar has communicated the identity of the registrant to the Complainant. On September 8, 2016, a cease-and-desist letter was sent to the Respondent requesting it to transfer the disputed domain name to the Complainant free of charge. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends that the disputed domain name is identical or at least confusingly similar to the MICHELIN mark as it substantially reproduces the Complainant’s trademark in its entirety. According to the Complainant, the mere the addition of the generic term “mag”, an abbreviation of the generic term “magazine” is not sufficient to distinguish itself from the Complainant’s mark. The Complainant further states that the generic Top-Level Domain (“gTLD”) “.xyz” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name.
Secondly, the Complainant asserts that the Respondent is not affiliated with the Complainant in any way nor has it been authorised by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. The Complainant contends that the Respondent has no prior rights or legitimate interests in the disputed domain name as the registration of the MICHELIN mark preceded the registration of the disputed domain name for years. Moreover, the Complainant emphasises that resolves to an inactive page which means that the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name.
Thirdly, the Complainant states the Respondent has registered the disputed domain name in bad faith. According to the Complainant, it is implausible that the Respondent was unaware of the MICHELIN mark when registering the disputed domain name given its worldwide reputation. Furthermore, the Complainant asserts that reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith. According to the Complainant, the Respondent’s failure to reply to the cease-and-desist letter is another proof of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
(i) Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by 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.”
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that a need to translate the Complaint from English into Russian would result in substantial expenses and undue delay of the proceeding.
The Panel notes that English is indeed very common all around the word. Moreover, the word “mag” which is part of the disputed domain name is in English which may indicate that the Respondent understands English.
Taking all the circumstances into account, including the Respondent’s failure to comment on this issue, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
(ii) Merits of the Case
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
The requested remedy may only be granted if the above criteria are met. A. Identical or Confusingly Similar
The disputed domain name contains the MICHELIN mark in its entirety combined with the term “mag”, an abbreviation of the dictionary term “magazine”. It is well established that adding a generic or descriptive term to the complainant’s mark does not influence the similarity between a trademark and a domain name (see Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and A Domain Privacy,WIPO Case No. D2012-1453). The mere adjunction of a gTLD is irrelevant as it is well established that the gTLDis insufficient to avoid a finding of confusing similarity (see, Heineken Italia S.p.A. v. xiongmiao,WIPO Case No. D2016-2193; Les Laboratoires Servier v. miller / JunZe zhang,WIPO Case No. D2016-2029).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the MICHELIN mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the MICHELIN mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, in particular, the use of the disputed domain name for an inactive website cannot be qualified as a bona fide offering of goods or services in this case.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the MICHELIN mark was registered years before the disputed domain name. In the Panel’s opinion, the notoriety of the MICHELIN mark indicate that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name. As concluded by other UDRP panels: the registration of a well-known trademark by a party, with no connection to its owner and no authorization and no legitimate purpose to use the trademark, is a strong indication of bad faith (see Socie’te pour I’Oeuvre et la Memoire d’Antoine de Saint Exupery - Succession Saint Exupery - D’Agay v. Perlegos Properties,WIPO Case No. D2015-2336)
Secondly, the disputed domain name resolves to an inactive website, which this Panel considers an instance of passive holding. As many UDRP panels indicted in numerous prior UDRP decisions, the fact that a domain name is held passively does not prevent a finding of bad faith (Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon,WIPO Case No. D2004-0245; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation,WIPO Case No. D2000-1232).
Moreover, the Panel finds that the Respondent’s failure to answer the Complainant’s cease-and-desist letter can be taken into account in a finding of bad faith. In the absence of a plausible explanation from the Respondent as to how and why its registration and use of the Complainant’s mark is appropriate or necessary, the Panel finds that the Respondent registered and used the disputed domain name to take advantage of the worldwide reputation and goodwill of the Complainant and to somehow turn a profit from it and/or to disrupt the business of the Complainant.
Therefore, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Piotr Nowaczyk
Sole Panelist
Date: March 3, 2017
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