The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Registration Private, Trustcor Systems S. De R.L. of Toronto, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2018. On May 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant’s 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 May 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2018.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on July 3, 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 has submitted evidence that it is the owner of a large number of trademark registrations in numerous countries for BFGOODRICH, including the following:
Canadian Trademark BFGOODRICH No. 0414720, registered on September 18, 1981 covering goods in class 12.
US Trademark BFGOODRICH No. 1376883, registered on January 7, 1986 covering goods in classes 6, 14, 16, 18, 20, 21, 24, 25 and 26.
The disputed domain name was registered by the Respondent on September 16, 2017. 5. Parties’ Contentions A. Complainant
Headquartered in Clermont-Ferrand, France, the Complainant is present in 170 countries, has 111,700 employees and operates 68 production facilities in 17 countries that together produced 187 million tires in 2016. The Group has a Technology Center in charge of research, development and process engineering, with operations in Europe, North America and Asia.
BFGOODRICH is one of the tire brands owned by the Complainant. The BFGOODRICH motorsport record now features no fewer than 200 titles in the various US off-road championships, 24 wins in the Baja 1000, 10 consecutive victories in the FIA All-Terrain Rally World Cup, and eight Dakar wins, most recently in 2012 with Stéphane Peterhansel driving a Mini. The BFGOODRICH brand is also present and is a well-known brand on the Canadian market. BFGOODRICH Tires has been successfully refreshing its portfolio of products in Canada since the 2013 launch of the g-ForceTM Sport COMP-2TM tire.
The Complainant became aware of the Respondent’s registration of the disputed domain name which reproduces its trademark BFGOODRICH with the adjunction of the generic term “promotions”. The disputed domain name resolves to an inactive page.
Investigations conducted by the Complainant revealed that email servers are configured on the disputed domain name. Consequently, there is a risk that the Respondent is engaged in a phishing scheme. Any use of an email address with the disputed domain name presents a significant risk where the Respondent could aim at stealing valuable information such as credit cards from the Complainant’s clients or employees.
The Complainant made efforts to resolve this matter amicably. On October 19, 2017, the Complainant sent a cease-and-desist letter to the Respondent via registered letter and email on the basis of its trademark rights related to the disputed domain name. The cease-and-desist letter requested the Respondent to transfer the disputed domain name to the Complainant free of charge.
The postal version of the cease-and-desist letter was returned undelivered to the Complainant marked as “unknown at the address”. It is hence obvious that the contact details provided in the WhoIs records are incorrect, thus, making the communication between the Complainant and the Respondent difficult. The Respondent never replied to the Complainant’s cease-and-desist letter despite several reminders.
The disputed domain name is identical or at least confusingly similar to the Complainant’s trademark BFGOODRICH. Indeed, the disputed domain name substantially reproduces the Complainant’s trademark in its entirety, which previous panels have considered to be “well-known” or “famous” (Compagnie Générale des Etablissements Michelin, Michelin Recherche et Technique S.A. v. Kaheng Cheng,WIPO Case No. D2017-0233; Michelin Recherche et Technique S.A. v. PrivacyP / DH5740243, DH5740243,WIPO Case No. D2013-1209; and Michelin Recherche et Technique S.A. v. EAC International CO., Limited,WIPO Case No. D2013-1210).
The disputed domain name reproduces the Complainant’s trademark BFGOODRICH in its entirety with the adjunction of the generic term “promotions”. The generic term gives an impression to Internet users that there are promotions on the Complainant’s products of the brand BFGOODRICH. With this type of combination, it is clear that the BFGOODRICH trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark and its activities or products.
As such, the addition of generic terms is insufficient to avoid any likelihood of confusion. Indeed, numerous WIPO UDRP decisions have established that adding a generic and descriptive term to a complainant’s mark does not influence the similarity between a trademark and a domain name. Accordingly, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant’s trademark.
The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the trademark. Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name. The registrations of the BFGOODRICH trademark preceded the registration of the disputed domain name for years.
The disputed domain name resolves to an inactive page. Therefore, the Respondent is not making any reasonable and demonstrable preparations to use the disputed domain name. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. The Respondent has no legitimate interests or rights in the disputed domain name.
The Respondent never answered to the Complainant’s letter despite the Complainant’s reminders. Panels have repeatedly stated that when respondents do not avail themselves of their rights to respond to a complainant, it can be assumed that the respondents have no rights or legitimate interests in a disputed domain name.
It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. Bad faith can be found where a respondent “knew or should have known” of the complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interests. Firstly, the Complainant is well-known throughout the world including in the Respondent’s country. Secondly, several Panels have previously mentioned its worldwide reputation, making it unlikely that the Respondent was not aware of the Complainant’s proprietary rights in the trademark. Thirdly, the composition of the disputed domain name reproduces the Complainant’s trademark BFGOODRICH in its entirety.
A quick BFGOODRICH trademark search would have revealed to the Respondent the existence of the Complainant and its trademark. The Respondent’s failure to do so is a contributory factor to its bad faith.
The disputed domain name resolves towards an inactive page. Nevertheless, this state of inactivity does not mean that the disputed domain name is used in good faith. Indeed, passive holding does not preclude a finding of bad faith. Previous Panels have already considered that passive holding of a domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, and that in such cases the Panel must give close attention to all the circumstances of respondent’s behavior. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Complainant submits that the clear inference to be drawn from the Respondent’s operations is that he is trying to benefit from the fame of the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark BFGOODRICH. The disputed domain name incorporates the Complainant’s trademark BFGOODRICH in its entirety with the addition of the descriptive term “promotions”. The ability for a descriptive term, such as “promotions”, to clearly distinguish the disputed domain name from the trademark BFGOODRICH, is limited. It is standard practice to disregard the generic Top-Level Domain (“gTLD”) under the confusingly similar test.
Having the above in mind, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or
(iii) that it intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark BFGOODRICH in connection with the disputed domain name which is confusingly similar to the Complainant’s trademark. There is no evidence in the case indicating that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute.
The Respondent has not submitted any evidence indicating that it is the owner of any trademark rights or that it is commonly known by the disputed domain name. Furthermore, there is no evidence in the case file indicating that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant’s registered trademark BFGOODRICH predates the registration of the disputed domain name. In addition, the Panel notes that the Complainant’s trademark BFGOODRICH is well-known according to several UDRP decisions cited by the Complainant.
Given the circumstances in the case, the Panel finds it unlikely that the Respondent did not have the Complainant in mind when registering and using the disputed domain name and concludes that the Respondent knew or should have known of the existence of the Complainant and its trademark.
There is no evidence in the case record indicating that the disputed domain name has resolved to an active website nor that the Respondent has made any legitimate use of the disputed domain name. The Respondent has been holding the disputed domain name passively while the Complainant has been sending cease-and-desist letters to the Respondent. As stated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and confirmed in subsequent UDRP decisions, “‘being used in bad faith’ is not limited only to positive action as inaction is within the concept.” Furthermore, as expressed in section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, passive holding as such does not prevent a finding of bad faith.
Based on the above, the evidence and the circumstances in this case, the Panel finds that the Respondent’s passive holding of the disputed domain name indicates bad faith. Furthermore, the Panel also finds that the Respondent’s failure to respond to the Complainant’s cease-and-desist letters is an additional circumstance evidencing the Respondent’s bad faith.
There is no evidence in the case record that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been registered and 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 shall be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: July 17, 2018
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