Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondents are Olivia Laureano Casanova of Villa Hermosa, Tabasco, Mexico / Cesar Gomes of Benito Juárez, Mexico City, Mexico. 2. The Domain Names and Registrar
The disputed 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 May 4, 2018. On May 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names. On May 7, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants 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 Respondent of the Complaint, and the proceedings commenced on May 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2018. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on May 29, 2018.
The Center appointed Felipe Claro as the sole panelist in this matter on June 12, 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 a leading tire company dedicated to designing and distributing tires, services and solutions for its clients’ needs; providing digital services, maps and guides to help enrich trips and travels and make them unique experiences; and developing high-technology materials that serve the mobility industry.
Headquartered in Clermont-Ferrand, France, 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 North America operates in Mexico, the United States of America and Canada, with corporate offices and production plants in each of the countries. Michelin has been operating in Mexico for more than 20 years with headquarters in the City of Querétaro. Currently it has more than 700 employees including a production site, also located in Querétaro, dedicated to the production of tires for cars and trucks. As part of its operations, Michelin markets tires for cars and trucks, mining, infrastructure, agriculture, machinery and recreational vehicles in Mexico.
Complainant and its MICHELIN trademarks enjoy a worldwide reputation. Complainant owns numerous MICHELIN trademark registrations around the world, including the Mexican trademark Reg. No. 139699, registered on December 18, 1967.
The domain name was registered on March 19, 2018 and resolves to a website containing the message “website coming soon!”; the domain name was registered on March 26, 2018 and also resolves to a website containing the message “website coming soon!”; the domain name was registered on March 26, 2018 and does not resolve to an active website. 5. Parties’ Contentions A. Complainant
Complainant became aware of Respondents’ registration of the domain names , , which entirely reproduce its trademark MICHELIN associated with the Spanish generic term “ventas”, meaning “sales”, in English and the term “com”.
Previously, the domain names and resolved towards a page offering discounts on the purchase of any vehicle. The websites impersonated Complainant’s identity and reproduced its trademark and logo. The pages also contained links towards social media accounts impersonating Complainant. These domain names currently resolve towards an inactive page.
The domain name resolves towards an inactive page.
Complainant became aware of this scheme when it received several calls from clients who have been victim of this scheme. Consequently, Complainant’s subsidiaries contacted the consumer protection agency in Mexico to inform them of the scheme and the legal measures being adopted to stop such frauds.
Accordingly, before starting the present proceeding, Complainant took measures to resolve this matter amicably.
Complainant detected the registration of several domain names comprising of the trademark MICHELIN and the generic term “ventas”, namely , and . Initially, these domain names were registered by a privacy service.
On April 5, 2018, Complainant sent a cease-and-desist letter to the privacy service on the basis of its trademark rights. The cease-and-desist letter requested the privacy service to reveal the identity of the registrant and to transfer the domain names , and to Complainant.
After the sending of the cease-and-desist letter, the privacy service unveiled the identity of the registrants of the said domain names. It appeared that the disputed domain names and have been registered by the registrant Olivia Laureano Casanova, while the domain name was registered by the registrant Cesar Gomes.
On April 5, 2018, Complainant undertook steps to shut down the websites “www.” and “www.” and also deactivate email at the disputed domain names.
The website contained links towards fraudulent Facebook and Instagram accounts impersonating Complainant, linked to the domain name and operated by Respondents. On the other hand, the website contained links towards Facebook, Instagram and Twitter accounts operated by Respondents and linked to the domain name .
These accounts impersonated Complainant and reproduced its logo and trademark. Therefore, Complainant has proceeded to the sending of online notifications to obtain the deactivation of the fraudulent accounts. The accounts were successfully deactivated.
Complainant contends that the disputed domain names are confusingly similar to Complainant’s marks, that Respondent lacks rights or legitimate interests in the disputed domain names, and that the disputed domain names were registered and being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the lack of a suitable response filed by Respondents as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding based on the Complainant’s undisputed representations. In that regard and apart from judging this proceeding through mere default of Respondents, the Panel makes the following specific findings. A. Preliminary Matter: Consolidation of multiple Respondents
Where a complaint is filed against multiple respondents, UDRP panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”, section 4.11).
Based on the evidence provided by Complainant, the Panel is satisfied that Olivia Laureano Casanova and Cesar Gomes are the same person and/or the disputed domain names are under common control, and that the consolidation is fair and equitable to the Parties. The Panel notes the disputed domain name nominally registered by Olivia Laureano Casanova contains links on the associated website and social media to , associated with Cesar Gomes. Thus, the Panel permits the consolidation of the Complaint. Therefore, the registrants Olivia Laureano Casanova and Cesar Gomes are hereinafter referred as to “Respondent”. B. Substantive Matter: Identical or Confusingly Similar
Complainant is the owner of the following MICHELIN Trademark Registrations:
- International Trademark No. 348615, dated July 24, 1968, renewed and covering goods and services in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;
- International Trademark No. 778878, dated March 18, 2002, renewed, and covering goods in class 12;
- European Union Trademark No. 001791243, dated August 3, 2000, renewed, covering goods in classes 6, 7, 12, 17 and 28;
- Mexican Trademark No. 139699, dated December 18, 1967, renewed, covering goods and services in classes 12 and 35.
In addition, Complainant operates, among others, domain names reflecting its trademarks in order to promote its services:
- registered on December 1, 1993;
- registered on June 6, 2002;
- registered on July 21, 2008.
The disputed domain names , , reproduce entirely Complainant’s trademark MICHELIN which previous UDRP panels have considered to be
“well-known” or “famous” (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. Cameron David Jackson,WIPO Case No. D2015-1671; and Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios,WIPO Case No. D2017-0234).
In many UDRP decisions, panels considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain names are identical or confusingly similar to Complainant’s registered trademarks (L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang,WIPO Case No. D2011-1627; Rapidshare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113).
The domain names , and entirely reproduce the trademark MICHELIN associated with the Spanish generic term “ventas” meaning “sales” in English and the term “com”. These are insufficient to avoid confusing similarity. See section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
Numerous UDRP decisions have established that adding a generic and descriptive term to the Complainant mark doesn’t influence the similarity between a trademark and a domain name (Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and A Domain Privacy,WIPO Case No. D2012-1453; Swarovski Aktiengesellschaft v. Luo Li,WIPO Case No. D2012-1604; Compagnie Générale des Etablissements Michelin v. isman to,WIPO Case No. D2012-0739).
The generic Top-Level Domain “gTLD” “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain names (Accor v. Noldc Inc,WIPO Case No. D2005-0016). The mere adjunction of a gTLD such as “.com” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (L’Oréal v Tina Smith,WIPO Case No. D2013-0820; Titoni AG v Runxin Wang,WIPO Case No. D2008-0820; and, Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877).
Complainant has used the trademark MICHELIN in connection with a wide variety of products and services around the world. Consequently, the public has learnt to perceive the goods and services offered under this mark as being those of Complainant. Therefore, the public would reasonably assume that the disputed domain names would be owned by Complainant or at least assume that it is related to Complainant.
For all of the above-mentioned reasons, the domain names in dispute are identical or confusingly similar to the trademark MICHELIN in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. C. Rights or Legitimate Interests
Respondent is neither affiliated with Complainant in any way nor have they been authorized by Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said mark. Furthermore, Respondent has no prior rights or legitimate interests in the domain names. The registration of the MICHELIN trademark preceded the registration of the disputed domain names for years.
In previous UDRP decisions, panels found that in the absence of any license or permission from the Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain names could reasonably be claimed (Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138).
Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
The domain names and were previously resolving towards a page which offered discounts on the purchase of any vehicle and comprised of payment facilities for such purchases. The websites impersonated Complainant’s identity and reproduced its trademark and logo. The said websites also contained links redirecting Internet users towards Facebook, Twitter and Instagram accounts operated by Respondent and linked to the domain names and . These social media accounts impersonated Complainant, its trademark and activities. Respondent is making a non-legitimate use of the domain names, with intent for commercial gain to misleadingly divert consumers from Complainant’s official website.
On the other hand, the domain name resolves to an inactive page.
Consequently, Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. It is most likely to be believed that Respondent has no rights or legitimate interest in the said domain name.
Also, it seems that Respondent had registered the disputed domain names with a privacy shield service to hide his/her identity and prevent Complainant from contacting him/her. Thus, such a behavior further highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
For all of the above-cited reasons, it is established that Respondent has no rights or legitimate interests in respect to the disputed domain names under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Complainant is well-known throughout the world, including Mexico – the home country of Respondent. Several UDRP panels have previously mentioned its worldwide reputation, making it unlikely that Respondent was not aware of Complainant’s proprietary rights in the trademark. Complainant’s notoriety can be traced back long before the registration of the disputed domain names. Complainant’s high reputation has been recognised by different panels in 2001 and 2002 (Compagnie Générale des Etablissements Michelin-Michelin & Cie v. los planetas,WIPO Case No. D2002-0875; Compagnie Générale des Etablissements Michelin - Michelin & Cie v. Mikkel Nielsen,WIPO Case No. D2001-0660).
It is implausible that Respondent was unaware of Complainant when registering the disputed domain names.
Bad faith can be found where respondent “knew or should have known” of Complainant’s trademark rights and, nevertheless registered a domain name in which he/she had no rights or legitimate interests (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
As the composition of the domain names reproduces identically Complainant’s trademark MICHELIN, it cannot be inferred that Respondent was unaware of Complainant when he registered the disputed domain names. In view of the prior webpages and social media accounts set up by Respondent, there is no doubt that Respondent had Complainant, its trademark and activities in mind at the time of the registration of the disputed domain names.
In fact, bad faith has already been 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 (LEGO Juris A/S v. store24hour,WIPO Case No. D2013-0091; Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226; Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464). Given the reputation of the MICHELIN trademark, registration in bad faith can be inferred.
Under Section 2 of the ICANN Policy, it is established that when someone registers a domain name, he/she represents and warrants to the registrar that, to his/her knowledge, the registration of the domain name will not infringe the rights of any third party.
A quick trademark search for MICHELIN would have revealed to Respondent the existence of Complainant and its trademark. Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226).
Supposing that Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple Google search or any other search engine using the keyword “Michelin” demonstrates that all first results relate to Complainant’s products or news.
In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of Complainant and its trademarks, as well as the high level of notoriety of Complainant, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademarks at the time of registration of the disputed domain names.
In light of the reputation of Complainant’s MICHELIN trademark, it is implausible that Respondent was unaware that Complainant owns trademark rights in the MICHELIN trademark. Previous UDRP panels have established that knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain names proves bad faith registration (Alstom v. Domain Investments LLC,WIPO Case No. D2008-0287; NBC Universal Inc. v. S,WIPO Case No. D2007-0077).
Respondent initially registered the domain names through a privacy shield service to hide his/her identity and contact details, thus, preventing Complainant from contacting him/her. It is only after Complainant’s intervention that the anonymous service unveiled the identity of the real registrant. Prior UDRP panels confirmed that a deliberate concealment of identity and contact information may in itself indicate registration in bad faith (Schering Corporation v. Name Redacted,WIPO Case No. D2012-0729; and TTT Moneycorp Limited. v. Diverse Communications,WIPO Case No. D2001-0725).
Consequently, in view of the above-mentioned circumstances, it is established that Respondent registered the disputed domain names in bad faith.
Some elements may be put forward to support the finding that Respondent also uses the domain names in bad faith.
Previous UDRP panels have considered that in the absence of any license or permission from Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the domain names could reasonably be claimed (Alstom, Bouygues v. Webmaster,WIPO Case No. D2008-0281; Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055).
Previously, the domain names and resolved towards a page which offers discounts on the purchase of any vehicle and comprises of payment facilities for such purchases. The fraudulent websites impersonated Complainant’s identity and reproduced its trademark and logo. The said website also contained links redirecting Internet users towards fraudulent Facebook account, Twitter and Instagram accounts operated by Respondent and linked to the domain names and . These social media accounts impersonated Complainant, its trademark and activities.
As the disputed domain names are confusingly similar to Complainant’s trademark, previous UDRP panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site” (MasterCard International Incorporated (“MasterCard”) v. Wavepass AS,WIPO Case No. D2012-1765: E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095).
The clear inference to be drawn from the Respondent’s operations is that he/she is trying to benefit from the fame of the Complainant’s marks.
It is more likely than not, that Respondent’s primary motive in registering and using the domain names was to capitalize on or otherwise take advantage of Complainant’s trademark rights, through the creation of initial interest of confusion.
The domain name is currently inactive. Nevertheless, this state of inactivity does not mean that the domain name is used in good faith. Indeed, passive holding does not preclude a finding of bad faith: “A principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose” (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia,WIPO Case No. D2011-0421).
Previous UDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the Panel must give close attention to all the circumstances of Respondent’s behaviour (Telstra Corporation Limited v. Nuclear Marshmallows ,WIPO Case No. D2000-0003).
Similarly, reproducing famous trademarks 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.
All aforementioned circumstances confirm that the domain names are used in bad faith.
Consequently, it is established that the Respondent both registered and used the domain names in bad faith in accordance with 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, , , be transferred to the Complainant.
Felipe Claro
Sole Panelist
Date: June 26, 2018
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