The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Privacy Protection Service INC d/b/a PrivacyP of Queensland, Nobby Beach, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2017. On March 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 9, 2017.
The Center verified that the Complaint together with the amended 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 March 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2017.
The Center appointed Gary J. Nelson as the sole panelist in this matter on April 11, 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 the owner of several trademark registrations for the MICHELIN word mark. The Complainant uses its MICHELIN trademark in connection with tires, among other products and services. Specifically, the Complainant owns at least the following Australian and International trademark registrations:
Jurisdiction
Registration No.
Mark
Classes
Date of Registration
Australia
258104
MICHELIN
12
May 1, 1972
Australia
847441
MICHELIN
9, 16, 37, and 41
August 23, 2000
International Registration
1049371
MICHELIN
7, 9, and 27
August 25, 2010
The disputed domain name, , appears to have been registered on October 3, 2005, and resolves to a website with multiple click-through links related to tires. 5. Parties’ Contentions A. Complainant
The Complainant is “the” leading tire company and is dedicated to 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.
The Complainant offers electronic mobility support services on “” and publishes travel guides, hotel and restaurant guides, maps and road atlases.
The Complainant is headquartered in Clermont-Ferrand, France. The Complainant is present in more than 170 countries, has 112,300 employees and operates 68 production plants in 17 different countries.
The Complainant conducts business in Australia through its subsidiary Michelin Australia Pty Ltd, which was established in 1997 to manage and develop the markets of Australia, New Zealand and the Asia Pacific region.
The disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of the Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(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. A. Identical or Confusingly Similar
The Complainant has established that it owns rights in the MICHELIN trademark and the disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark.
The Complainant owns several registrations for the MICHELIN trademark in Australia and throughout the world. Specifically, the Complainant owns Australian Trademark Registration Nos. 258104 and 847441 and International Trademark Registration No. 1049371 for the MICHELIN mark.
Accordingly, the Complainant has established rights in its MICHELIN trademark pursuant to Policy paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.1.
The disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark because the disputed domain name incorporates the entirety of the Complainant’s MICHELIN trademark and merely adds the descriptive term “tire”, along with an extra letter “e” in addition to the generic Top-Level Domain (“gTLD”) “.com”. Neither the addition of dictionary or merely descriptive terms to a well-known mark or the addition of a gTLD is sufficient to create a distinct domain name capable of overcoming a proper claim of confusingly similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the disputed domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy paragraph 4(a)(i) is satisfied).
In regard to the Complainant’s MICHELIN trademark, the addition of the word “tires” to the end of the mark is insufficient to overcome a finding of confusing similarity.
Confusing similarity is especially acute in this case where the merely descriptive term (i.e., “tires”), simply describes the primary product produced by the Complainant. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).
The addition of a letter designed to create an obvious misspelling of the Complainant’s trademark is insufficient to avoid a finding of confusing similarity where the misspelled trademark remains the dominant or principal component of the disputed domain name. Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971 (finding the domain name confusingly similar to the complainant’s FUJI trademark). Here, the addition of the letter “e” at the end of the Complainant’s MICHELIN trademark to form “micheline” fails to avoid confusing similarity.
The Panel therefore finds that the Complainant has proven the requirement of Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has failed to file a response, which can suggest, in appropriate circumstances, that a respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that a respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a response, the Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the terms “michelin,” “micheline,” “tires,” or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the disputed domain name. The Panel notes that by not submitting a response, the Respondent also failed to provide any evidence establishing rights or legitimate interests.
The disputed domain name resolves to a website featuring numerous click-through links for tires and other products/services related to tires. Because the Complainant also promotes and distributes tires and products/services related to tires, the Panel concludes that the Respondent is using the disputed domain name in association with a website that competes directly with the Complainant’s business interests. Furthermore, it is likely the Respondent is receiving click-through fees each time an Internet user accesses the website at “www.” and clicks on any of the numerous links available. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel concludes the Respondent is not using the disputed domain name in association with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(iii). See America Online, Inc. v. Xiangfeng Fu,WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”). The Panel furthermore finds no other circumstances giving rise to any Respondent rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has proven the requirement of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Respondent likely chose the disputed domain name with full knowledge of the Complainant’s rights in the MICHELIN trademark and specifically the Complainant’s rights in the MICHELIN trademark for use in association with tires. The Panel draws this conclusion based on the fact the website associated with the disputed domain name specifically provides click-through links to websites of the Complainant’s competitors offering competing tire products and related services. Also, the relevant priority dates for at least some of the Complainant’s trademark registrations precede the date upon which the disputed domain name was registered (i.e., 2005). See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
The Respondent is using the Complainant’s MICHELIN trademark to attract Internet users to a website at the disputed domain name . As indicated above, this website features click-through links that include products that compete directly with the products sold and/or offered by the Complainant under their MICHELIN trademark. This is sufficient evidence of bad faith. See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing,WIPO Case No. D2005-0313.
The Panel therefore finds that the Complainant has proven the requirement of 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 disputed domain name be transferred to the Complainant.
Gary J. Nelson
Sole Panelist
Date: April 12, 2017
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