The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Koray Anic of Ankara, Turkey. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 22, 2018. On January 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 23, 2018, 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 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 23, 2018.
The Center appointed Olga Zalomiy as the sole panelist in this matter on February 27, 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
The Complainant is a French manufacturer and seller of tires for airplanes, automobiles, farm equipment, heavy duty trucks, motorcycles, and bicycles.
The Complainant owns several registrations of the MICHELIN trademark, such as:
- International trademark MICHELIN No. 348615, registered on July 24, 1968, duly renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;
- International trademark MICHELIN No. 778878, registered on March 18, 2002, duly renewed, and covering goods in class 12;
- European Union Trade Mark MICHELIN No. 001791243, registered on October 24, 2001, covering goods in classes 6, 7, 12, 17 and 28.
In addition, the Complainant operates websites that promote its goods and services under the domain names , and , which were registered on December 1, 1993, October 6, 2005 and on July 21, 2008, respectively.
The Respondent registered the Domain Name on September 12, 2017. The Domain Name consists of the MICHELIN trademark and the generic Top-Level Domain ("gTLD") suffix ".video". The Domain Name resolves to a registrar parking page.
On October 12, 2017, the Complainant sent a cease and desist letter to the Respondent informing it about the Complainant's trademark rights in the MICHELIN marks, the Respondent's infringement of the MICHELIN marks and requested transfer of the Domain Name to the Complainant. The Respondent did not reply to the cease and desist letter. 5. Parties' Contentions A. Complainant
The Complainant's contentions may be summarized as follows:
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant claims that it is the owner of several registrations of the MICHELIN trademark. The Complainant contends that it also operates websites that promote its goods and services under domain names incorporating its MICHELIN trademark. The Complainant argues that the Domain Name incorporates its well-known trademark MICHELIN in its entirety, which is sufficient to establish that the Domain Name is identical or confusingly similar to the Complainant's registered trademark. The Complainant claims that the gTLD suffix (".video") should be disregarded since it is a technical requirement of registration of the Domain Name and does not serve to distinguish the Domain Name from the Complainant's trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to use and register its trademarks or to seek registration of any domain name incorporating the MICHELIN trademark. The Complainant argues that in absence of any license or permission from the Complainant to use its widely-known trademark, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed by the Respondent. The Complainant asserts that its registration of the MICHELIN trademark preceded the registration of the Domain Name for years. The Complainant alleges that the Respondent fails to show any intention of noncommercial or fair use of the Domain Name, because 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 Registrar's default page which is considered to be an inactive page. The Complainant argues that because the Respondent failed to respond to the Complainant's cease and desist letter, it can be assumed that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant alleges that it is implausible that the Respondent was unaware of the Complainant's well-known trademark and business when he registered the Domain Name. The Complainant claims that bad faith may be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. The Complainant argues that had the Respondent conducted a quick search for the MICHELIN mark, he would have become aware of the existence of the Complainant and its trademarks. The Respondent's failure to do so is a contributory factor to its bad faith. The Complainant alleges that because the Respondent has neither tried to defend his rights nor offered any valid arguments to justify his registration of the Domain Name in response to the Complainant's cease and desist letter, bad faith registration may be inferred. The Complainant claims that the Respondent is also using the Domain Name in bad faith because in the absence of any license or permission from the Complainant to use such widely-known trademark, the Respondent cannot claim any actual or contemplated bona fide or legitimate use of the Domain Name. The Complainant claims that passive holding of the Domain Name does not preclude finding of bad faith use. The Complainant argues that reproducing a famous trademark in a domain name in order to attract Internet users to an inactive website cannot be considered fair use or use in good faith. The Complainant believes that the Respondent is trying to benefit from the fame of the Complainant's trademark. Finally, the Complainant claims that it is likely that the Respondent registered the Domain Name to prevent the Complainant from using its trademark in the Domain Name, which constitutes evidence of the Respondent's bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the 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 respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To prove the first UDRP element, the Complainant must demonstrate that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has established its rights in the MICHELIN trademark by submitting copies of trademark registrations for the MICHELIN trademarks in various jurisdictions. It is well established that "[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case."1
The test for confusing similarity between the Domain Name and the Complainants' trademarks "involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name."2 "Where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."3 "The applicable Top Level Domain ('TLD') in a domain name […] is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test."4
Here, the Domain Name consists of the MICHELIN trademark, and the gTLD suffix ".video". Because the Domain Name incorporates the Complainant's MICHELIN trademark in its entirety, the Domain Name is confusingly similar to the Complainant's trademark. The gTLD suffix is disregarded under the confusing similarity test. 5
Thus, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant's trademark and the Complainant satisfied the first element of the UDRP. B. Rights or Legitimate Interests
Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.6 Once the complainant has made out the prima facie case, the respondent carries the burden of producing evidence demonstrating it has rights or legitimate interests in the domain name.7 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.8
The Complainant claims that the Respondent does not hold any "rights" by way of trademarks or common law rights in and to the term "michelin". The Complainant alleges that it has never given permission to the Respondent to use the Complainant's trademark in domain names, or for any other purpose. Typically, in the absence of any license or permission from a complainant to use the complainant's trademarks, no bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138. Therefore, the Respondent could not claim to have bona fide or legitimate use of the Domain Name.
In addition, the record shows that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Domain Name does not resolve to any developed website and does not appear to have done so. There is no evidence of any use or preparations to use that Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.
Therefore, the Panel finds that the Complainant made out a prima facie case in respect of the Respondent's lack of rights or legitimate interests in the Domain Name. Because the Respondent did not dispute the Complainant's contentions, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.9
Therefore, the Panel holds that the second element of the UDRP has been satisfied. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
It is more likely than not that at the time of the Domain Name registration the Respondent was aware of the Complainant, its business and its well-known MICHELIN trademark. First, the Respondent registered the Domain Name many years after the Complainant registered its MICHELIN trademark. Second, the MICHELIN trademark has been found to be well-known by many previous UDRP panels. See, Compagnie Générale des Etablissements Michelin v. Privacy Protection Service INC d/b/a PrivacyP / Domain Admin, Private Registrations Aktien Gesellschaft,WIPO Case No. D2017-0096; Compagnie Générale des Etablissements Michelin v. dfdfddan wei, Mi Mi Xiao Wang,WIPO Case No. D2017-1039; Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu,WIPO Case No. D2014-1240; Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang,WIPO Case No. D2013-1418; Compagnie Générale des Etablissements Michelin v. Milan Kovac / Privacy--P,WIPO Case No. D2012-0634; Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev,WIPO Case No. D2012-0384; Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / A Domain Privacy,WIPO Case No. D2012-0045; Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios,WIPO Case No. D2017-0234. Prior UDRP panels inferred the respondent's knowledge of the complainant's trademarks, where, like here, the Complainant's marks are widely known and "a respondent could not credibly claim to have been unaware of the mark".10
Although the Domain Name does not point to any developed website, it does not prevent finding of bad faith. "[P]anelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding".11 In similar situations, UDRP panelists look into the totality of circumstances in a specific case, including the following: "(i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put."12
The totality of circumstances in this case shows it is more likely than not that the Respondent is using the Domain Name in bad faith. First, the Complainant claims that it had been using the MICHELIN trademark in more than 170 countries for almost 49 years prior to the Domain Name registration. During the time, the Complainant's trademark has become well-known. The Complainant also asserts that it has been present in the Turkish market, where the Respondent resides, since 1936 and has a network of over 300 dealers. It is well-established that the registration of a well-known mark as a domain name is clear indication of bad faith in itself, even without considering other elements. See The Gap, Inc. v Deng Youqian,WIPO Case No. D2009-0113. Second, the Respondent did not respond to these assertions and did not submit any evidence helping to identify its intended use of the Domain Name. The Respondent also failed to respond to the Complainant's cease and desist letter. Third, the Respondent appears to have provided false contact information on the WhoIs database associated with the Domain Name, as evidenced by the failure to deliver the Written Notice to the physical address specified in the registration information. Fourth, the Respondent ignoring the Complainant's cease and desist letters is considered an indication of bad faith because a good faith user of a domain name would likely have responded to allegations of the Domain Name's bad faith use.
All these factors cumulatively produce an overwhelming inference of bad faith registration and use and therefore the third element of the UDRP has been proved. 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 Name, , be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: March 12, 2018
1 Section 1.2.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")
2 Section 1.7, WIPO Overview 3.0.
3 Id.
4 Section 1.11.1, WIPO Overview 3.0.
5 Section 2.1, WIPO Overview 3.0.
6 Id.
7 Id.
8 Id.
9 Id.
10 Section 3.2.2, WIPO Overview 3.0
11 Section 3.3, WIPO Overview 3.0
12 Id.
Full & Egal Universal Law Academy