The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / George Sinclair of Whitby, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name (the "Domain name") is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2017. On July 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain name. On July 25, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 26, 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 July 28, 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 August 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 23, 2017.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 28, 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 present in 170 countries, has 111,700 employees and operates 68 production facilities in 17 countries which together produced 187 million tires in 2016. The Complainant is also present in Panama where the Respondent is located. The Complainant has a commercial office for Central America and the Caribbean since 2000, with an administrative and marketing support team in Panama and a sales force in the main countries of the area.
The Complainant is the owner of the following trademark registrations (hereafter the "Trade marks"):
- International trademark MICHELIN No. 348615, registered on July 24, 1968;
- International trademark MICHELIN No. 816915, registered on August 27, 2003;
- European Union MICHELIN Trade mark No. 004836359, registered on March 13, 2008.
The Respondent registered the Domain name on March 23, 2017, which does not resolve to an active website.
On May 11, 2017, the Complainant sent a cease-and-desist letter to the Respondent via registered mail and email requesting the Respondent to transfer the Domain name to the Complainant free of charge. The Respondent did not reply to the letter. The address of the Respondent which was later revealed by the registrar as entered by the Respondent when registering the Domain name was 123, 123, whitby, ON, M1M1M1, Romania. 5. Parties' Contentions A. Complainant
According to the Complainant, the Domain Name is identical or confusingly similar to the Trade marks, as it reproduces the Trade marks, which previous UDRP panels have considered "well-known", in their entirety. The Complainant further states that the extension ".host" is irrelevant as it results from a technical constraint, and in any event does neither conceal the reproduction of the Trade marks, nor mitigate the risk of confusion and association between the Trade marks and the Domain name in the public's mind.
The Complainant submits that the Respondent has no legitimate interests or rights in the Domain name, since the Respondent is not affiliated with the Complainant in any way and has not been authorised or licensed by the Complainant to use and register its Trade marks or to seek registration of any domain name incorporating the Trade marks. Moreover, the Complainant states, the Respondent is not known by the name "Michelin". To the best of Complainant's knowledge the Respondent has neither used nor made any demonstrable preparation to use the Domain name in connection with a bona fide offering of goods or services as the Domain name resolves to the default page of the registrar, which may be considered an inactive page. Consequently, the Complainant concludes that the Respondent also cannot show any intention of noncommercial or fair use.
According to the Complainant the Domain name has been registered and is being used in bad faith. The Complainant is of the view that it is implausible that the Respondent was unaware of the Trade marks and the Complainant's activities when he registered the Domain name, since both the Complainant and the Trade marks are well-known throughout the world, including Panama, where the Respondent is located. Moreover, the Respondent points out, a quick MICHELIN trademark search and a search via Google or any other search engine using the keyword "michelin" would have revealed to the Respondent the existence of the Complainant and its Trade marks. Moreover, according to the Complainant, the Respondent registered the Domain name through a privacy shield service to hide his identity and contact details, thus preventing the Complainant from contacting him, indicating registration in bad faith. The Complainant emphasizes that, after the true identity of the registrant had been revealed by the Registrar, it appeared that he had not entered any existing address, as the address indicated by the Respondent when registering the Domain name was 123, 123, whitby, ON, M1M1M1, Romania. The fact that the Domain name resolves to a default website of the Registrar does not preclude a finding of bad faith, the Complainant states, and requires all relevant circumstances to be considered. In addition, the Complainant states, reproducing a famous trademark 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. The Complainant submits that, in the absence of any license or permission from the Complainant to use widely-known trademarks (such as the Trade marks), no actual or contemplated bona fide or legitimate use of the Domain name could reasonably be claimed. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade marks. The Domain name is confusingly similar to the Trade marks as it incorporates the marks in their entirety. The generic Top-Level Domain ("gTLD") ".host" is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2).
Therefore, the Panel finds that the Domain name is confusingly similar to the Trade marks in which the Complainants have rights. B. Rights or Legitimate Interests
The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain name (WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant's consent to use the Trade marks as part of the Domain name, is not commonly known by the Domain name and has not acquired trade mark rights in the Domain name. The Respondent's absence of use of the Domain name in connection with an active website means that he cannot claim to make a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain name.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain name. C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain name the Respondent was or should have been aware of the Trade marks, since:
- the Respondent's registration of the Domain name occurred 49 years after the registration of the earliest of the Trade marks;
- both the Complainant and the Trade marks are well known throughout many countries, including Panama, where the Respondent is domiciled;
- the mark MICHELIN, which is incorporated in its entirety in the Domain name, is not a dictionary word, and does not appear to be a name of which it is likely that a registrant would spontaneously or accidentally coin;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain name in its name would have informed the Respondent of the existence of the Trade marks and the Complainant.
Under these circumstances, the Panel concludes that the Domain name has been registered in bad faith.
With regard to bad faith use, the fact that the Domain Name at this stage does not appear to resolve to an active website does not imply a lack of bad faith. As set out in the WIPO Overview 3.0, section 3.2.2, the consensus view is that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see WIPO Overview 3.0, section 3.0 and, inter alia, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka,WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith.
In this case, the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain name:
- the probability that the Respondent was aware or should have been aware of the Complainant's rights in the Trade marks;
- the non-dictionary nature of the mark MICHELIN incorporated in the Domain name, such that the Respondent cannot claim to have "accidentally" registered a domain name that happens to correspond to the Trade marks;
- the lack of a formal Response of the Respondent;
- the lack of a response of the Respondent to the cease-and-desist letter sent by the Complainant in May 2017;
- the use of a privacy shield in connection with falsely entering of a non-existent address upon registration of the Domain name, indicating that the Respondent from the outset intended to make it impossible to be reached by communications from third parties, including rights owners like the Complainant;
- the reputation of the Trade marks, indicating that the Respondent deliberately targeted the Trade marks in order to benefit from that reputation.
Therefore, the Panel concludes that the Domain name has been registered and is being used in bad faith. 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.
Wolter Wefers Bettink
Sole Panelist
Date: September 11, 2017
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