The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Whois Privacy Protection Service by VALUE-DOMAIN of Osaka, Japan / Takuro Hirabayashi of Fukuoka, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 6, 2018. On July 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 11, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 13, 2018.
On July 11, 2018, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on July 12, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 in English and Japanese of the Complaint, and the proceedings commenced on July 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 14, 2018.
The Center appointed Teruo Kato as the sole panelist in this matter on August 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
According to the Complainant, the Complainant is a leading tire company: "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".
The Complainant owns, inter alia, International trademark MICHELIN No. 1254506, registered on December 10, 2014, designating multiple jurisdictions, including Japan and covering goods and services in classes 9, 35, 38, 39, 41 and 42; and Japanese trademark MICHELIN No. 2087086, registered on October 26, 1988, duly renewed and covering services in classes 7, 9, 12, 17 and 20.
Additionally, the Complainant is the owner of domain names, amongst others, registered on December 1, 1993 and registered on March 26, 2001.
The disputed domain name was registered on April 10, 2018.
The Respondent is Takuro Hirabayashi whose address is given as being in Fukuoka, Japan. The disputed domain name was registered using a privacy service.
According to the Complainant and relevant evidence, the website at the disputed domain name "resolved to a website with adult content until recently changed to an error page".
The Complainant requests that the disputed domain name be transferred to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contends that it is the owner of various trademarks including MICHELIN.
The Complainant also contends that the disputed domain name is confusingly similar to the Complainant's MICHELIN trademark and that the generic and descriptive term "club" should be disregarded in considering the confusing similarity.
The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant's trademark MICHELIN, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide use or trade under the disputed domain name.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
The Complaint has been submitted in English. The Registrar confirmed that the language of the Registration Agreement is Japanese. The Center sent an email communication in both Japanese and English regarding the language of the proceeding. The Panel notes that the Respondent has not submitted an objection for English to the language of the proceeding and has not submitted any reply.
In view of the circumstances of this case and in accordance with paragraph 11(a) of the Rules the Panel decides that English will be the language of the proceeding. B. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of MICHELIN registered trademarks, including inter alia:
- International trademark MICHELIN No. 1254506, registered on December 10, 2014, designating multiple jurisdictions, including Japan and covering goods and services in classes 9, 35, 38, 39, 41 and 42; and
- Japanese trademark MICHELIN No. 2087086, registered on October 26, 1988, duly renewed and covering services in classes 7, 9, 12, 17 and 20.
As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states that "[t]he applicable Top Level Domain ('TLD') in a domain name (e.g., '.info', '.com', '.club') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test", and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the generic Top-Level Domain ("gTLD"), the disputed domain name consists of the Complainant's trademark MICHELIN and the term "club". It is well established that, where a disputed domain name incorporates, as here, the entirety of a complainant's trademark, the addition of common terms does not prevent a finding of confusing similarity. (See Salvatore Ferragamo S.p.A v. Ying Chou,WIPO Case No. D2013-2034; Salvatore Ferragamo S.p.A. v. Haonan Hong,WIPO Case No. D2013-2040; Salvatore Ferragamo S.p.A. v. Brian E. Nielsen,WIPO Case No. D2014-1123; and Salvatore Ferragamo S.p.A. v. Wei Huan,WIPO Case No. D2014-1290).
The Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Notably, the only use that has been made of the disputed domain name is for a website displaying adult content. The disputed domain name wholly incorporating the Complainant's trademark, the Panel finds that such use is not bona fide within the meaning of the Policy.
By not submitting a response, the Respondent has failed to overturn such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on that website or location.
The Panel notes and accepts that the trademark MICHELIN was registered and extensively used internationally, including in Japan, long before the disputed domain name was registered on April 10, 2018. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name.
As to the use in bad faith, the Complainant submitted a material indicating that, as of April 19, 2018, the disputed domain name resolved to a website with adult content, which according to the Complainant, "is likely to generate revenue". The Respondent was given an opportunity to raise its objection to the contention made by the Complainant but has not done so. The Panel notes that the contents of the material submitted by the Complainant refer to a certain area in Japan, which corresponds to the place at which the Respondent was stated to be located.
The Panel undertook limited factual research into matters of public record, and consulted certain historical archive resources, but no historical data relating to the disputed domain name were available (see section 4.8 of WIPO Overview 3.0).
Under the circumstances the Panel holds that it is most likely that the material submitted correctly shows the disputed domain name's resolution as of April, 19, 2018. The Panel considers such use to amount to bad faith use of the disputed domain name.
The Complainant further submitted a material indicating that, as of July 3, 2018, the disputed domain name resolves to an error page stating "Internal Server Error". This error status was verified by the Panel as of August 29, 2018.
As regards this apparent current non-use, the Panel refers to section 3.3 of WIPO Overview 3.0, which states that "panelist 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." and, in applying this, "panelists will look at the totality of the circumstances in each case."
In the present case the Panel is satisfied that the overall circumstances of the case suggest that the Respondent's current non-use is in bad faith.
Such circumstances include, among others, the strength and renown of the Complainant's MICHELEN trademark, the Respondent's failure to take part in the present proceedings, which offered the Respondent an opportunity to respond to, among others, the material showing the contents of the webpage as of April 19, 2018, and the apparent concealment of the Respondent's identity and contact details until the same were disclosed by the Registrar on July 9, 2018. (See "Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. G, Inc.,WIPO Case No. D2017-0246.)
In the premises the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. The third requirement 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.
Teruo Kato
Sole Panelist
Date: August 29, 2018
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