The Complainants are Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France and Michelin Recherche et Technique S.A. of Granges-Paccot, Switzerland (hereinafter collectively referred to as the “Complainant”), represented by Dreyfus & associés, France.
The Respondent is Nacxit Jimenez, Ni idea Consultora of Oaxaca, Mexico. 2. The Domain Names and Registrar
The disputed domain names , and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2017. On November 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 21, 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 December 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2017.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 8, 2018. 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
Michelin is one of the leading tire companies in the world, designing and distributing tires, digital services, maps and guides. Michelin 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. Michelin has been operating in Mexico for more than 20 years with headquarters in the City of Querétaro. Michelin Recherche et Technique S.A. is a subsidiary of Compagnie Générale des Etablissements Michelin. Some years ago, the Michelin Group acquired the trademark BFGOODRICH. B.F. Goodrich Company is an American manufacturer of automobile tires and related product, with more than 100 years of heritage, including four decades of desert racing and tire development in Mexico.
The Complainant owns numerous MICHELIN and BFGOODRICH trademark registrations around the world, in particular:
- International trademark MICHELIN n° 348615, registered on July 24, 1968, renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;
- European trademark MICHELIN n° 001791243 registered on October 24, 2001, renewed and covering goods and services in classes 6, 7, 12, 17 and 28;
- Mexican Trademark BFGOODRICH n° 210351 registered on August 2, 1978 (duly renewed), covering goods and services in classes 12 and 35.
The Complainant owns domain names, such as , , , and .
The Complainant has tried to resolve the matter amicably through contacting the Respondent before filing the Complaint. At the time of filing of the Complaint, and at the time of drafting this decision, and redirected to a Facebook page of a Tire Dealer. Now, and point to the official page of Complainant. The domain name redirects towards a Facebook page of a Tire Dealer and an Automotive Repair Shop.
According to the Registrar, the Domain Names were set to expire on December 5, 2017, but the Domain Names are kept locked during the proceeding. 5. Parties’ Contentions A. Complainant
Michelin Recherche et Technique S.A. is a subsidiary of Compagnie Générale des Etablissements Michelin. Consequently, the two Complainant companies belong to the same group and should be considered an “entity” for the purposes of initiating a UDRP action. The Complainant provides trademark registrations, and submits with reference to former UDRP cases that its trademark is well known in the market. The Complainant argues that the Domain Names reproduce the Complainant’s trademarks MICHELIN and BFGOODRICH, which previous UDRP panels have considered as well-known. The Complainant argues that the adjunction of geographical terms connected to Mexico, does not provide additional specification or sufficient distinction from the Complainant or its marks. As to , it reproduces the trademark BFGOODRICH with the mere deletion of the letters “bf”. These deleted letters do not significantly affect the appearance or pronunciation of the Domain Name. Hence, according to the Complainant, the Domain Names are identical or confusingly similar to the trademarks MICHELIN and BFGOODRICH.
The Complainant argues that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant’s trademarks. The Respondent has no prior rights or legitimate interests in the Domain Names. There is no relationship between the Parties that justifies the registration of the Domain Names by the Respondent and nothing in the record suggests that the Respondent is commonly known by the Domain Names. The Respondent is not making a fair or legitimate non-commercial use of the Domain Names. On the contrary, it seems to be making a commercial use of the Domain Names in view of the redirection towards a fake Facebook page where the Respondent offers tires and automotive repair services. The Respondent is making a non-legitimate use of the Domain Names, with intent for commercial gain to misleadingly divert consumers from the Complainant’s official websites.
As to bad faith, the Complainant argues that it is implausible that the Respondent was unaware of the Complainant when he registered the Domain Names. The Complainant is well known throughout the world. As described above, the Respondent is using the Domain Names to direct Internet users towards a Facebook page where the Respondent offers tires and automotive repair services. The Respondent misleadingly diverts consumers from the Complainant’s official websites. It constitutes a use in bad faith pursuant to the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue
The Complainant argues that Michelin Recherche et Technique S.A. is a subsidiary of Compagnie Générale des Etablissements Michelin. The two Complainant companies belong to the same group and should be considered an “entity” for the purposes of the UDRP. Pursuant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1, a panel may “[i]n assessing whether a complaint filed by multiple complainants may be brought against a single respondent, […] look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”. In this case, the Panel finds that the two Complainant companies can be considered as an “entity” in the present UDRP proceeding, cf L’Oréal, Laboratoire Garnier et Compagnie, Lancôme Parfums et Beauté et Compagnie v. Zhao Ke, Zeng Wei, Zhu Tao, Yang Yong, Ma Yun, Ye Genrong, Ye Li, ChinaDNS Inc., DomainJet, Inc., Hao Domains Services,WIPO Case No. D2011-1608; Lancôme Parfums Et Beauté Et Compagnie, Laboratoire Garnier Et Compagnie, L'Oréal S.A. v. Cong Ty Co Phan Phununet,WIPO Case No. D2010-0603; and L’Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix,WIPO Case No. D2006-0869. B. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademarks MICHELIN and BFGOODRICH.
The test for confusing similarity involves the comparison between the trademarks and the Domain Names. In this case, the Domain Names are confusingly similar to the Complainant’s trademarks. The addition of the geographical terms connected to Mexico does not avoid a finding of confusing similarity. Furthermore, the mere deletion of the letters “bf” from the trademark BFGOODRICH in does not significantly affect the appearance or pronunciation of the Domain Name. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain “.com”.
The Panel finds that the Domain Names are confusingly similar to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register domain names containing its trademarks or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. As documented by the Complainant, the Respondent uses/has used the Domain Names to resolve to a Facebook page where the Respondent offers tires and automotive repair services. Hence, the Respondent is not making a legitimate use of the Domain Names, but seems to misleadingly divert consumers from the Complainant’s official websites. This is neither a bona fide offering nor a legitimate noncommercial or fair use within the meaning of the Policy.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
It is likely that the Respondent has been aware of the Complainant’s trademarks and its business when the Respondent registered the Domain Names. The Complainant is well known in Mexico and throughout the world.
The Panel finds the Respondent registered and is using the Domain Names with the intention of confusing Internet users into believing that the Domain Names are associated with the Complainant. The use of the Domain Names to direct Internet users to a Facebook page where the Respondent offers tires and automotive repair services is use of a well-known trademark to attract Internet users to a website for commercial gain. It constitutes bad faith pursuant to the Policy. The bad faith is supported by the fact that the Respondent has not responded to the Complainant’s contentions.
For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of the paragraph 4(a)(iii) 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 Domain Names , and be transferred to the Complainant.
Mathias Lilleengen
Sole Panelist
Date: January 9, 2018
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