The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Operaciones TerraLycos, TerraLycos Mexico SA de CV of Monterrey, Nuevo León, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2017. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 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 February 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2017.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on March 17, 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, present in more than 170 countries and operating in Mexico for more than twenty years.
The Complainant is the owner of the MICHELIN trademark registrations:
International MICHELIN trademark registration (number 348615) since July 24, 1968, for the following Nice classes:1, 6,7,8,9,12,16,17 and 20; and
Mexican MICHELIN trademark registration (number 139699) since August 15, 1967 for classes 12 and 15.
MICHELIN enjoys a worldwide reputation. Thus, it is a well-known trademark.
The disputed domain name was registered on April 1, 2005.
The disputed domain name is not connected to an active webpage.
On November 16, 2016, the Complainant sent a cease and desist letter to the Respondent but no answer was received. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or at least confusingly similar to the Complainant´s trademark MICHELIN. The Complainant asserts that the disputed domain name substantially reproduces the Complainant´s trademark in its entirety. Previous decisions have considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to Complainant´s registered trademarks.
The MICHELIN trademark is well-known or famous. As such a number of WIPO UDRP decisions have considered so (for example Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu, WIPO Case No. D2014-1240 or Compagnie Générale des Etablissements Michelin v. Way Su, WIPO Case No. D2016-2221).
While the disputed domain name fully reproduces the Complainant´s MICHELIN trademark, the addition of the term “servillantas” is insufficient to avoid any likelihood of confusion. Further, reproducing the Complainant´s trademark may give rise to a false impression, that the Respondent is an authorized dealer of the Complainant.
Further, the Complainant asserts that the generic Top-Level Domain (“gTLD”) “.com” is not to be taken into consideration when assessing this first requirement of the Policy.
In respect the second element of the Policy, the Complainant alleges that the Respondent has no legitimate interest in the disputed domain name since there is no relationship between the parties giving rise to authorization to register the disputed domain name incorporating the mark MICHELIN.
The Respondent cannot reasonably pretend to develop a legitimate activity through the disputed domain name which reproduces a well-known trademark.
The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name and by not answering the Complainant’s cease-and-desist letter it can be assumed that the Respondent has no rights in the disputed domain name.
Finally, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. With regard to the registration, the Complainant contends that the Respondent “knew or should have known” the Complainant´s trademark rights based on the following: MICHELIN is a globally well known mark, it is unlikely that the Respondent was unaware of the Complainant´s trademark and the disputed domain name fully reproduces the Complainant´s trademark. Therefore, the Complainant concludes that the Respondent had knowledge of the Complainant at the time of the registration of the disputed domain name.
Moreover, the Complainant notes that the Respondent is committed to comply with article 2 of the Policy. According to this provision the Respondent has to warrant that does not infringe upon or otherwise violate the rights of any third party. Such due diligence, the Complainant affirms, can be carried out not only through a world trademark data base but through a simple Google search.
Besides, redirects to an inactive page which amounts to passive holding. Most panels have decided that such passive holding of a domain name can satisfy the requirement of Policy paragraph 4(a)(iii). Accordingly, the Complainant refers to Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested of the disputed domain name to the Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 14(a) of the Rules in the event of a failure of the Respondent to lodge a Response, the Panel is required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate”. This dispute resolution procedure was accepted by the disputed domain name registrant as a condition of registration of the disputed domain name. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate. 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 trademark or service mark in which the Complainant has rights”.
The Panel finds that the Complainant has registered rights in the famous and highly distinctive MICHELIN trademark.
According to WIPO’s Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), this first element “serves essentially as a standing requirement.” The WIPO Overview 2.0 paragraph 1.2 provides that:
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”.
The Panel notes that the disputed domain name incorporates the Complainant´s trademark in its entirely with the addition of the descriptive word “servillantas”. This is a descriptive and acronym term that can be translated into “tire service”. Accordingly, the disputed domain name is highly suggestive of a connection to the Complainant, its trademarks and its activities. However, as noted above in the WIPO Overview 2.0, the confusing similarity test under the UDRP does not require a showing of confusion arising from actual use. Rather, the test focuses on “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”.
Therefore, the Panel finds that the disputed domain name is confusingly similar the Complainant´s MICHELIN trademark. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
No evidence that is before this Panel suggests that the Respondent has any rights or legitimate interests in the disputed domain name. As argued by the Complainant, the Respondent is not affiliated with the Complainant, the Respondent has no authorization to use and register the MICHELIN trademark and the Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. In fact, there is no active website.
Accordingly, the Panel is of the opinion that the Complainant has made out a prima facie case.
The Panel would have expected the Respondent to produce evidence of his rights or legitimate interests. However, by not receiving such material from the Respondent the Panel concludes that, in registering the disputed domain name, the Respondent was deliberately targeting the Complainant’s well-known trademark. In the view of the Panel, knowingly adopting a confusingly similar domain name as the Respondent was suggesting somehow a connection to the Complainant in the same field of activity. Such a registration cannot give rise to a right or legitimate interest for the purposes of paragraph 4(a)(ii) of the Policy.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has established that the MICHELIN trademark has been used extensively throughout the world and based on its reputation and use is to be considered as a well-known trademark. Accordingly, it is very unlikely that the Respondent would have registered unless he knew the existence of the Complainant, its trademark and activities (Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517). Likewise, such a previous knowledge may also be inferred from the fact that the term “servillantas” is descriptive of the main activity of the Complainant. Thus, the Respondent had to be aware of the Complainant and his field of activity. Therefore, the Respondent knew or should have known the Complainant´s trademark.
As the Parties are neither affiliated nor has the Respondent authorization to register or use the disputed domain name, the registration of the disputed domain name must have been based on knowledge of the Complainant´s marks and activities (See L’Oréal v. Noorinet,WIPO Case No. D2015-0755). In the Panel´s view, with the evidence of the case, the Respondent sought to make use somehow of the Complainant’s substantial reputation and thus registered the disputed domain name in bad faith.
Based on the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 the Complainant claims that the passive holding of the disputed domain name amounts to the Respondent’s use in bad faith. In order to assess such a claim the Panel takes into account the following circumstances of the case:
- the Complainant´s trademark MICHELIN is a well-known mark in multiple jurisdictions, including in Mexico.
- the Respondent has no rights or legitimate interests in the disputed domain name;
- there is no evidence of actual or intended use in good faith; and
- the Respondent did not reply to the Complaint.
In light of the above, the Panel finds that the Respondent´s inaction constitutes bad faith registration and use. Accordingly, the Complainant has succeeded on 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 cancelled.
Manuel Moreno-Torres
Sole Panelist
Date: March 28, 2017
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