The Complainant is Compagnie Générale des Etablissements Michelin of France, represented by Dreyfus & associés, France.
The Respondent is Tajan Infrastructure Development Corporation, Izak Sedighpour of Canada, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2018. On March 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 2, 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 March 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2018. On March 16, 2018, the Center received the Respondent’s communication, indicating that it was willing to transfer the Disputed Domain Name at USD 229. On March 19, 2018, the Center sent a communication to the Parties regarding possible settlement. The Complainant opted not to request suspension of the proceeding for settlement discussion purpose. On April 5, 2018, the Center notified the Parties of the Commencement of Panel Appointment Process.
The Center appointed Michael D. Cover as the sole panelist in this matter on April 18, 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 headquartered in Clermont-Ferrand, France and has operations in 170 countries, operating 68 production facilities in 17 countries, producing 187 million tyres in 2016. The Complainant is active, in particular, in Canada.
The Disputed Domain Name was registered on October 3, 2017 and resolves to a web page that gives information about domains.
The Complainant made certain efforts to resolve this matter amicably before commencing this administrative proceeding. 5. Parties’ Contentions A. Complainant Confusingly Similar to a Trademark in which the Complainant has rights
The Complainant sets out that it and its MICHELIN trademarks enjoy a worldwide reputation. The Complainant notes that it owns numerous registered trademarks for MICHELIN around the world and sets out details in the Annexes to the Complaint. These include, states the Complainant, International (e.g., No. 348615, registered on July 24, 1968), European (e.g., No. 001791243, registered on October 24, 2001) and Canadian registrations (e.g., No. 0372999, registered on June 11, 1976). The International trademark, states the Complainant, was first registered in 1968.
The Complainant also notes that the Complainant and its affiliates operate, amongst others, domain names that reflect its trademarks in order to promote its business, such domain names including registered on December 1, 1993, and registered in October 6, 2000.
The Complainant states that the Disputed Domain Name is identical to the Complainant’s trademark MICHELIN and that it incorporates the Complainant’s trademark in its entirety, which has been found by previous UDRP panels to be well-known; the Complainant cites various examples of prior UDRP decisions in that regard. The Complainant submits that the Disputed Domain Name is identical or confusingly similar to its trademark MICHELIN and that this would be likely to cause confusion.
In both connections, the Complainant states that it is generally accepted that a generic Top-Level Domain (“gTLD”), such as “.one”, should be ignored in assessing identical or confusingly similar and concludes that the Disputed Domain Name is identical or confusingly similar to the trademark MICHELIN, in which the Complainant has rights, and that paragraph 4(a)(i) is fulfilled. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant sets out that the registration of its MICHELIN trademark preceded the registration of the Disputed Domain Name by years. The Complainant also submits that the Disputed Domain Name is so identical to the trademark of the Complainant that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the Disputed Domain Name.
The Complainant goes on to state that the Respondent is not commonly known by the name MICHELIN, and is not in any way affiliated with the Complainant nor is the Respondent authorized or licensed to use the trademark MICHELIN. The Complainant also states that the Respondent has not demonstrated use of or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant provided evidence, indicating that the Disputed Domain Name resolves to a website that gives information about domains (Annex 1 to the Complaint).
The Complainant submits that the Respondent had a clear intention for commercial gain, as evidenced by the Respondent’s efforts to sell the Disputed Domain Name to the Complainant for valuable consideration in excess of the Respondent’s documented out of pocket expenses.
The Complainant concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii). Registered and Used in Bad Faith
The Complainant starts out by stating that bad faith can be found where the Respondent “knew or should have known” of the Complainant’s trademark rights in which it had no rights or legitimate interests and that, in this case, it is implausible that the Respondent was unaware of the Complainant when he registered the Disputed Domain Name. This, says the Complainant, is because of the fact that the Complainant is well-known throughout the world, because of the reputation of the Complainant’s trademark MICHELIN, which is reproduced in its entirety in the Disputed Domain Name and because of the fact that a simple trademark or Internet search would have enabled the Respondent to discover the rights of the Complainant and that knowledge of the rights of the Complainant can be inferred. The Complainant notes that previous UDRP panels have established that knowledge of the Complainant’s rights at the time of registration of the disputed domain name proves bad faith registration.
With regard to use in bad faith, the Complainant submits that, in light of the fact that that the Respondent uses the Disputed Domain Name to direct Internet users to a webpage that gives information about domains, that the Disputed Domain Name is being used in bad faith. The Complainant also submits that it is more likely than not that the Respondent’s primary motive was to capitalize on or otherwise take advantage of the Complainant’s trademark rights.
The Complainant refers to the Respondent’s offer, in December of last year, to sell the Disputed Domain Name to the Complainant for USD 237, which is in excess of the Respondent’s out of pocket expenses, and submits that is this clear evidence of registration and use of the Disputed Domain Name in bad faith.
The Complainant concludes that the Respondent has both registered and used the Disputed Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. Attempts to Settle
Before commencing this administrative proceeding, the Complainant recites that it sent a cease and desist letter to the Respondent, with a request to transfer the Disputed Domain Name to the Complainant. In December of last year, the Respondent responded with an offer, says the Complainant, to sell the Disputed Domain Name to the Complainant for USD 237, which is an amount that the Complainant regarded as excessive of the Respondent’s out-of-pocket costs (the Respondent apparently later lowered its offer to USD 229 as is reflected in its email of March 16, 2018). As no amicable settlement could be found, states the Complainant, the current administrative proceeding was commenced by the Complainant.
The Complainant requests the Panel to order that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent has not responded substantively to the Complaint. 6. Discussion and Findings Substantive Issues
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established both registered and common law rights in its trademark MICHELIN. The Complainant owns trademarks for MICHELIN as an International trademark and a European trademark and also as a Canadian registered trademark, which is the country of the Respondent. The use of MICHELIN over so many years will have built up substantial goodwill and reputation in the business conducted under the trademark MICHELIN and the resulting common law rights.
The Panel accepts that the Disputed Domain Name is identical to the trademark MICHELIN, in which the Complainant has rights. The Disputed Domain Name reproduces the Complainant’s trademark MICHELIN in its entirety.
The Panel also accepts that the addition of a gTLD, such as “.one” is not sufficient to avoid a finding that the Disputed Domain Name is identical to the trademark MICHELIN.
The Panel accordingly finds that the Disputed Domain Name is identical to the Complainant’s trademark, in which it has rights, and that paragraph 4(a)(i) of the Policy has been met. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no suggestion that the Complainant has permitted or licensed the Respondent to use its MICHELIN trademark and the original registration of the MICHELIN trademark precedes the registration of the Disputed Domain Name by very many years.
It is a reasonable inference that the Respondent was aware of the Complainant’s MICHELIN trademark when the Respondent registered the Disputed Domain Name. There is no evidence that the Respondent was commonly known by the Disputed Domain Name or has been making legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the MICHELIN trademark of the Complainant.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met. C. Registered and Used in Bad Faith
The Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith.
The Panel finds that the Respondent acquired the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to the Complainant for valuable consideration in excess of the Respondent’s out of pocket expenses. The Panel also finds, on the evidence and on the balance of probabilities, that the Respondent, by using the Disputed Domain Name in the way described in this Decision has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s MICHELIN trademark as to the source, sponsorship, affiliation or endorsement of that website.
The Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been met. 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.
Michael D. Cover
Sole Panelist
Date: April 20, 2018
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