The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Kanoksak Puangkham of Bangplee, Thailand. 2. The Domain Name and Registrar
The disputed 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 October 12, 2018. On October 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 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 October 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2018. On October 24, 2018, the Center received a communication from the Respondent. On the same day, the Center sent an email regarding possible settlement to the Parties, and the Complainant requested suspension of the proceeding. On October 24, 2018, the Center notified to the Parties the suspension of the proceeding until November 23, 2018. On October 29, 2018, the Center received a communication from the Respondent. October 31, 2018, the Center received a communication from the Complainant. On November 23, 2018, the Complainant requested reinstitution of the proceeding. On the same day, the Center notified the Parties of the reinstitution of the proceeding, and the Response due date is December 6, 2018. The Respondent did not submit any further communications. December 7, 2018, the Center notified the Parties that it will proceed with Panel appointment.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on December 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.
As the language of the registration agreement is in English, the language of these proceedings shall be in English, pursuant to paragraph 11 of the Rules. 4. Factual Background
The Complainant is Compagnie Générale des Etablissements Michelin, a French company of Clermont‑Ferrand, France. It uses the well-known trade name “Michelin” as well as the MICHELIN trademark, and the record shows that it is among the leading tire manufacturers with a presence in 170 countries, with 111,700 employees operating 68 production facilities in 17 countries, which together produced 187 million tires in 2016.
Since its foundation in 1889, the Complainant’s market penetration has grown and the record shows that the Complainant’s Michelin tires lead France’s rankings in brand recognition. It has also achieved considerable renown in the world of professional motorsports.
Annex 5 of the Complaint shows that the Complainant has registered and used the following trademarks (among others):
Country/Territory
Registration Number
Mark
In class(es)
Date of Registration
Thailand
727999
MICHELIN
12
April 28, 2009
Thailand
457328
MICHELIN
12
June 22, 2001 (duly renewed)
Thailand
727998
MICHELIN (in Thai characters)
27
April 28, 2009
Thailand
727997
MICHELIN (in Thai characters)
12
April 28, 2009
European Union
001791243
MICHELIN
6,7,12,17 and 28
August 3, 2000 (duly renewed)
European Union
005670872
MICHELIN
3,4,7,9,11,12,20 and 28
February 15, 2008 (duly renewed)
Annex 6 of the Complaint shows that the Complainant and its affiliates operate the following domain names (among others): registered on December 1, 1993; originally registered on June 27, 2002; and registered on June 22, 2017.
The disputed domain name was registered on September 8, 2017. The disputed domain name does not resolve to an active webpage. 5. Parties’ Contentions A. Complainant
The Complainant seeks relief in the form of transfer of the disputed domain name to the Complainant in accordance with paragraph 4(i) of the Policy, on the following grounds:
Firstly, the disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark because the disputed domain name substantially reproduces the Complainant’s trademark in its entirety which previous panels have considered to be well known or famous. The Complaint alleges that the disputed domain name reproduces the Complainant’s MICHELIN trademark with the addition of what the Complainant deems to be the generic term “course”, apparently a French word meaning “race” in English.
Secondly, the Complainant is aggrieved that by registering the disputed domain name, the Respondent has “created a likelihood of confusion” with the Complainant’s MICHELIN trademark, thereby potentially “misleading Internet users into thinking that Respondent is, in some way, associated with Complainant”.
Thirdly, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain because, inter alia:
(a) the Respondent is neither affiliated with the Complainant in any way nor was it authorized to use its trademarks or to register any domain name incorporating its trademarks;
(b) the Complainant had registered and used the MICHELIN trademarks for years before the registration of the disputed domain name;
(c) the Respondent is not commonly known by the disputed domain name or the name “Michelin” and there is no evidence to the contrary;
(d) the disputed domain name is “so identical” with the Complainant’s MICHELIN trademark which is famous, and that it is unlikely the Respondent could be ignorant of this fact;
(e) the disputed domain name resolved to an index page which the Complainant considers an “inactive” page, and thus the Respondent cannot assert that it has made or is making any legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain through the misleading diversion of consumers;
(f) the disputed domain name is configured to an email server, creating the risk and the potential that the Respondent is engaged in a phishing scheme; and
(g) upon receiving the Complainant’s cease-and-desist letter (Annex 4 of the Complaint), the Respondent had accepted to transfer the disputed domain name to the Complainant. The Respondent had transferred the authorization code but after several reminders failed to initiate the transfer the disputed domain name. The Complainant suggests that if the Respondent had a right or legitimate interest in the disputed domain name, it would “have vigorously defended its rights”.
Finally, the Complainant alleges that the Respondent had registered and used the disputed domain name in bad faith, because:
(a) It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name, and that it “knew or should have known” of the MICHELIN trademark, which is registered in Thailand, and whose and are used in Thailand;
(b) several panels have independently acknowledged the worldwide reputation of the Complainant;
(c) the composition of the disputed domain name uses the French term “course”, or “race” in English, referring to the Complainant’s motorsports activities, and thus demonstrating the Respondent was using a word obviously connected with a well-known trademark;
(d) the Policy establishes a duty for the Respondent as registrant of the disputed domain name to verify whether or not the registration of a domain name infringes the rights of any third party. A quick search for “Michelin” would have sufficed to reveal the existence of the Complainant and its MICHELIN trademark – even a simple Google search would have been sufficient.
(e) the Respondent neither tried to defend its rights nor stated any valid arguments to justify the registration of the disputed domain name (Annex 4 of the Complaint). Instead, the Respondent accepted to transfer the domain name (but never did so).
(f) the disputed domain name resolved to an index page and is currently inactive. Nevertheless, a state of inactivity does not mean that the disputed domain name was used in good faith because passive holding does not preclude a finding of bad faith; and
(g) an email server has been configured on the disputed domain name and thus, there is a risk that the Respondent has or is intending to engage in a phishing scheme (Annex 1 of the Complaint). Therefore, the use the disputed domain name by the Respondent presents a significant risk where the Respondent could “steal valuable information from the Complainant’s clients or employees”. Such potential has been recognized by prior panels as an indication of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. The Respondent’s scant email reply to the Complainant’s attorneys sent on October 26, 2017 offering to transfer the disputed domain name to the Complainant is contained in Annex 4 of the Complaint. The record shows multiple reminders sent by the Complainant to the Respondent on the subject of the Respondent’s offer to transfer the disputed domain name.
The Respondent’s two brief emails to the Center sent during the suspension period of the proceedings, on October 24 and 29, 2018 respectively, apparently show:
(a) that the Respondent was confused at the entire administrative proceeding and the suspension thereof; and
(b) that the Respondent believed all it had to do to effect the transfer of the disputed domain name was the provision of the authorization code.
The emails do not otherwise answer the Complainant’s contentions in any way. The legal weight of the attempted settlement by the Complainant (which the Complainant has introduced into the record) and the ultimately aborted transfer offer made by the Respondent prior to the reinstatement of proceedings is discussed briefly in sections 6B and 6C below. 6. Discussion and Findings
Since the Respondent failed to reply to the Complainant’s contentions, this administrative proceeding will be decided on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and will draw appropriate inferences in accordance with paragraph 14(b) of the Rules.
The Complainant must demonstrate, and has the burden to prove, that each ingredient of the test in paragraph 4(a) of the Policy have been satisfied, in order to prevail. These are:
(a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of such disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This Panel is satisfied that the Complainant has duly proven it has rights in and to the MICHELIN trademark, and that the disputed domain name is confusingly similar to the MICHELIN trademark.
There can be no doubt that the disputed domain name reproduces the Complainant’s MICHELIN trademark in its entirety. UDRP jurisprudence is settled that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206, and Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227, among a wealth of decisions on this point.
The Complainant states that the addition of the generic term “course” which is a French word meaning “race” in English does not influence the similarity between its trademark and the disputed domain name.
The Panel finds that as the MICHELIN trademark is recognizable within the disputed domain name, the addition of the term “course” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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.”
Accordingly, Panel finds that the Complainant has met the requirements of paragraph 4(a)(i) of the UDRP. B. Rights or Legitimate Interests
It is well settled that the Complainant may put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to satisfy the requirement of UDRP paragraph 4(a)(ii). The burden of production then shifts to the Respondent to rebut that prima facie case. See section 2.1 of the WIPO Overview 3.0.
The Panel is satisfied that no evidence exists to demonstrate, before any notice of the dispute, the Respondent used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with any bona fide offering of goods or services. On the contrary, there is a wealth of evidence demonstrating the Complainant’s use of the MICHELIN trademark and its domain names in connection with extensive trade and the offering of goods and services the world over. “Michelin” has become a household name, synonymous with tires and widely associated with motorsports, including in Thailand where the record shows the Respondent is domiciled. The fame of the Complainant’s MICHELIN mark is a fact that other panels have acknowledged, for example in Compagnie Générale des Etablissements Michelin v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2017-0115, Compagnie Générale des Etablissements Michelin v. Shuitu ChenWIPO Case No. D2016-1924, Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim GonulluWIPO Case No. D2014-1240, and Compagnie Générale des Etablissements Michelin v. Vyacheslav NechaevWIPO Case No. D2012-0384.
Given the notoriety and fame of the Complainant’s MICHELIN trademark, it would be highly questionable that a bona fide or legitimate interest in the disputed domain name could be claimed by the Respondent in the absence of a license or authorization from the Complainant. It is clear that no license or authorization of any kind has been provided by the Complainant to the Respondent to use any of its trademarks or to apply for or use any domain name incorporating those marks. The Panel cites with approval the posture in cases such as LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138, on the absence of license and authorization with respect to rights and legitimate interests.
No evidence shows that the Respondent (as an individual, business, or other organization) is commonly known by the disputed domain name, or that the Respondent has acquired any trademark or service mark rights in and to the MICHELIN trademark. That being the case, the Panel is persuaded by the Complainant’s assertion that the Respondent is making no legitimate noncommercial or fair use of the disputed domain name.
Furthermore, by not replying to the Complainant’s contentions, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some right or legitimate interest in the disputed domain name. On the contrary, the Complainant has submitted evidence to show that upon receiving the Complainant’s cease-and-desist letter, the Respondent accepted to transfer the disputed domain name to the Complainant. After several reminders, the Respondent communicated the authorization code but failed to initiate the transfer of the disputed domain name despite several reminders (Annex 4 of the Complaint).
The Panel acknowledges that the current proceeding, including its suspension for the purpose of settlement discussions, has provided ample opportunities for the Respondent to defend its rights in and to the disputed domain name. The Respondent’s offer to transfer the disputed domain name to the Complainant is not consistent with a demonstration of rights or legitimate interests. There is no evidence in the record of any communication by the Respondent either to the Complainant or to the Center resisting these proceedings on the basis of any rights or legitimate interests the Respondent has or may have. Therefore, the totality of the evidence offered by the Complainant coupled with the actions of the Respondent, and the lack of a response to the Complaint replying to the Complainant’s contentions, compels the conclusion that the Respondent has no rights or legitimate interests in and to the disputed domain name.
Accordingly, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith
The Complainant has established that the disputed domain name is confusingly similar with its well‑known MICHELIN trademark. The Complainant has established that the disputed domain name resolves to an “index” page, namely a parking page, calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. Most likely the objective is to attain some form of commercial gain, either pay-per-click or referral revenue or through reselling the disputed domain name back to the Complainant through “cybersquatting” or through obtaining Internet user information through “phishing”. The Complaint contends that the Respondent could use the disputed domain name (and an email configured with the disputed domain name) for “phishing” activities, which would be conduct amounting to bad faith.
The Complainant submits that opportunistic bad faith can be inferred since the Respondent “knew or should have known” about the Complainant’s MICHELIN trademark. See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot WIPO Case No. D2009-0320. The Panel accepts that such knowledge on the part of the Respondent can readily be inferred.
The disputed domain name was registered years (and in the case of one the Complainant domain name, decades) after the Complainant registered its domain names and trademark, and thus only after a period of time during which the Complainant had accumulated enormous business good will and trust in the “Michelin” trade name and MICHELIN trademark. The Complaint alleges but does not conclusively demonstrate that the Respondent has or is intending to engage in phishing activities, but even if the Respondent merely passively held the disputed domain name, bad faith can be found if the domain name in question contains a widely known trademark (as it does in this case) and it was not used for any good faith purpose. See Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003.
Since the disputed domain name is confusingly similar to the MICHELIN trademark, and given that such trademark is so well known even in Thailand where the Respondent is resident, and given that the disputed domain was not used in conjunction with any good faith purpose, this Panel finds no impediment in concluding that an abusive use of the disputed domain name can be found within the meaning of paragraph 4(a)(iii) of the Policy.
To briefly address the Complainant’s contention that the offer to transfer the disputed domain name by the Respondent suggests bad faith behind the registration of the disputed domain name: the Panel acknowledges that settlement discussions between the parties are “admissible”, insofar as such discussions may be relevant to assessing the parties’ respective motivations.
In this instance however, based on the evidence on record in the form of brief emails from the Respondent annexed to the Complaint and in Annex 4 to the Complaint, it is insufficient to conclude from the settlement discussions alone that the offer to transfer by the Respondent conceded or tacitly admitted bad faith, although the Panel considered this fact in conjunction with other evidence as part of the analysis in section 6B above on rights or legitimate interests. The Panel is slow to draw a conclusion of bad faith from settlement discussions as there is no evidence in those discussions that the Respondent sought any monetary gain from the transfer. There is also no compelling evidence of bad faith in the Respondent’s failure to follow through on the transfer because the Respondent had allegedly provided the authorisation code for the transfer, even if it did not ultimately transfer the disputed domain name.
Given that the settlement discussions are so briefly recorded here, on balance, therefore, the Panel will disregard these discussions for the purposes of the bad faith analysis. However, on the totality of the other evidence and legal arguments in the Complaint, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the UDRP. 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.
Syed Naqiz Shahabuddin
Sole Panelist
Date: January 1, 2019
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