The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, the Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2017. On January 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 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.
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, and the proceedings commenced on January 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2017.
The Center appointed Alistair Payne as the sole panelist in this matter on March 1, 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 a leading tire company that also offers electronic mobility support services “ViaM” and publishes travel guides, hotel and restaurant guides, maps and road atlases. The Complainant has operations worldwide including in Europe, North America and Asia.
The Complainant owns numerous trade mark registrations worldwide for its MICHELIN mark including International trade mark MICHELIN No. 348615, dated July 24, 1968, designating a range of other countries and based on French trade mark registration No. 720 185. The Complainant also operates various websites to promote its goods and services including its website at “www.m”.
The disputed domain name was originally registered in October 2005. The disputed domain name redirects towards several random websites which at times correspond to parking pages displaying sponsored links related to the Complainant’s field of activity, such as “MICHELIN tire Rebates” or “Michelin”. The disputed domain name is also offered for sale on several of these websites. Some redirections also correspond to inactive pages 5. Parties’ Contentions A. Complainant
The Complainant submits that its MICHELIN mark in which it owns registered trade mark rights as noted above is wholly contained in the disputed domain name and through long established use worldwide is a truly well reputed or well-known mark. It says that following numerous prior UDRP panel decisions the unauthorised use of a well-known mark in a domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s mark. In any event, says the Complainant, in this case the addition of an “e” and of the generic term “tire” does not distinguish the disputed domain name and only heightens the likelihood of confusion since the addition of the word “tire” makes direct reference to the Complainant’s products. Accordingly the Complainant submits that the disputed domain name is confusingly similar to its registered MICHELIN mark.
The Complainant further submits that the Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trade mark, or to seek registration of any domain name incorporating that mark. Furthermore, the Respondent has no prior rights or legitimate interests in the domain name. The Complainant also notes that the registration of its MICHELIN trade marks preceded the registration of the disputed domain name by many years.
The Complainant further submits that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name as it incorporates the well-known MICHELIN mark entirely and then redirects towards several random websites which at times correspond to a parking page displaying sponsored links related to the Complainant’s field of activity, such as “MICHELIN tire Rebates” or “Michelin”, to websites indicating that the disputed domain name is offered for sale while some of the redirections are to inactive pages. These redirections, says the Complainant, do not demonstrate the use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The fact that the disputed domain name randomly redirects to various parking pages displaying commercial links (some of them being related to automotive products and/or services, including tires and notably those of the Complainant and its competitors) and to inactive pages is inconsistent with a bona fide offering of goods or services. In addition, says the Complainant, the Respondent’s failure to respond to its cease-and-desist letter and its use of a privacy service are inconsistent with bona fide use.
As far as registration and use in bad faith is concerned the Respondent submits that in view of the degree of renown attached to the MICHELIN mark and the ubiquitous nature of its brand in internationally and on the Internet, it is implausible that the Respondent was unaware of the Complainant’s rights in the MICHELIN mark when it registered the disputed domain name. The Complainant submits that the Respondent either did or should have known of the Complainant’s mark before it registered the disputed domain name.
The Complainant notes as set out above that the disputed domain name resolves to several random websites which at times correspond to a parking page displaying sponsored links related to the Complainant’s field of activity, such as “MICHELIN tire Rebates” or “Michelin”, or to websites indicating that the disputed domain name is offered for sale, while some of the redirections are to inactive pages. Such random uses of the disputed domain name cannot reasonably be considered as a bona fide use of the disputed domain name. More specifically, some of the webpages displaying commercial links to which the disputed domain name points are related to cartographic and/or automotive products and/or services, including maps as well as tires and notably those of the Complainant and its competitors.
The Complainant submits that the offer or advertising of the same products as the Complainant indicates that the Respondent is seeking to take advantage of this goodwill and reputation by creating an association or commercial link between the parties, in order to redirect customers from the Complainant to its own website.
The Complainant submits that the Respondent’s use of the disputed domain name to direct Internet users to various webpages displaying pay-per-clicks links that are likely to generate revenues amounts to the Respondent taking undue advantage of the Complainant’s trade mark to generate profits. Further, says the Complainant, some of the webpages displaying commercial links to which the disputed domain name points are related to cartographic and/or automotive products and/or services, including maps as well as tires and notably those of the Complainant and its competitors, or are inactive pages and this is all amounts to evidence of use of the disputed domain name in bad faith.
In addition, says the Complainant, it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trade mark in the disputed domain name and the Complainant notes again that the Respondent failed to respond to its cease-and-desist letters prior to filing this Complaint. This, says the Complainant, all amounts to evidence of the Respondent’s registration and use of the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant owns the extremely well reputed and highly distinctive MICHELIN mark and has demonstrated that it owns registered trade mark rights for its mark worldwide and in particular in International registration No. 348615 as set out above. The disputed domain name only differs from this mark by the addition of an “e” and of the generic term “tire”. These additions do not distinguish the disputed domain name on a side-by-side comparison. In fact the addition of the word “tire” only serves to reinforce the conclusion that the disputed domain name has an association with or is part of the Complainant’s business because it makes direct reference to the Complainant’s products. For these reasons the Panel finds that the disputed domain name is confusingly similar to the Complainant’s MICHELIN mark. B. Rights or Legitimate Interests
The Complainant has submitted that it is not affiliated with the Respondent in any way and nor has the Respondent been authorized by the Complainant to use and register its trade mark, or to seek registration of any domain name incorporating that mark. The Complainant maintains that the Respondent has no prior rights or legitimate interests in the disputed domain name and is using the disputed domain name to resolve to a website that features pay-per-click links, at least in part, in relation to products that are the same as the Complainant’s products as well as competing products.
The Panel notes that the disputed domain name wholly incorporates the well-known MICHELIN mark entirely and then redirects towards several random websites which at times feature parking pages displaying sponsored links directly related to the Complainant’s field of activity, such as “MICHELIN tire Rebates”, or to websites indicating that the disputed domain name is offered for sale. This does not amount to a bona fide offer of goods and services.
Considering the degree of fame and repute attributable to the Complainant’s MICHELIN mark, the Complainant’s submissions as set out above and the manner in which the Respondent appears to be using the disputed domain name as further described under C below, the Panel finds that the Complainant has made out a prima facie case under this element of the Policy. As the Respondent has not rebutted the Complainant’s case, the Panel finds that the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered in October 2005 at a point in time when the Complainant’s mark was clearly extremely well known. As noted earlier, the disputed domain name wholly incorporates the Complainant’s mark and the Panel finds that in these circumstances the Respondent must have known about the Complainant’s mark when he registered the disputed domain name. As the disputed domain name includes the generic word “tire” and resolves to websites that either feature links to or advertisements for tire products, or which advertise the disputed domain name for sale, there is a clear inference to be drawn that the Respondent registered the disputed domain name in bad faith.
The Respondent’s use of the disputed domain name to direct Internet users to various webpages displaying pay-per-click links that are likely to generate revenues and which display commercial links relating in particular to maps and tires, including to products of the Complainant and of its competitors, amounts to evidence of use of the disputed domain name in bad faith. In the Panel’s view the requirements of paragraph 4(b)(iv) of the Policy have been made out, namely that the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s failure to respond to the Complainant’s agents’ cease-and-desist letter, the fact that the disputed domain name is offered for sale on certain of the webpages to which it resolves and in the circumstances of this case, the Respondent’s use of a privacy service to mask its identity, only reinforces the Panel’s view that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complaint succeeds under 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 name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: March 12, 2017
Full & Egal Universal Law Academy