Complainant is Compagnie Générale des Etablissements Michelin, of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is World Industrial, LNQ of Ho Chi Minh, Viet Nam. 2. The Disputed Domain Name and Registrar
The disputed domain name (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 March 13, 2019. On March 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 13, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2019. Respondent sent an email communication to the Center on March 15, 2019. The Center notified the Commencement of Panel Appointment Process on April 5, 2019.
The Center appointed Isabel Davies as the sole panelist in this matter on April 9, 2019. 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
Complainant is the owner of numerous MICHELIN trademark registrations worldwide and particularly in Europe and Viet Nam, which precede the registration of the Disputed Domain Name by many years; such as European Union trademark MICHELIN No. 001791243, filed on August 3, 2000 and registered on October 24, 2001 covering goods and services in classes 6, 7, 12, 17 and 28 and Vietnamese MICHELIN Trademark No. 4-2014-06928, filed on April 2, 2014, registered on March 28, 2016 covering goods in class 12.
Complainant has registered domain names, which contain the trademark MICHELIN, including registered on December 1, 1993.
Respondent registered the Disputed Domain Name on March 1, 2018. 5. Parties’ Contentions A. Complainant
A. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))
Complainant states that its trademark MICHELIN enjoys a worldwide reputation and that it owns numerous MICHELIN trademark registrations around the world.
Complainant states that it is, in particular, the owner of MICHELIN Trademark Registrations in Vietnam MICHELIN registered on March 28, 2016 and July 9, 2014 covering goods in class 12 and in the European Union registered on October 24, 2001. It states that it has many other trademarks worldwide covering goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42, inter alia in Vietnam where Respondent seems to be located. It states that the Disputed Domain Name incorporates a transliteration in Latin characters of the Vietnamese word “lopxe” meaning tyre.
Complainant states that it operates domain names reflecting its trademark in order to promote its services including the domain name , registered on December 1, 1993.
Complainant submits that the Disputed Domain Name is confusingly similar to Complainant’s trademark MICHELIN stating that it reproduces Complainant’s trademark MICHELIN in its entirety, which previous panels have considered to be “well-known” or “famous” and cites several UDRP panel decisions.
Complainant states that, 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 name is identical or confusingly similar to Complainant’s trademark. It refers to a variety of cases including, L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang,WIPO Case No. D2011-1627.
It states that the Disputed Domain Name associates Complainant’s trademark MICHELIN with the descriptive term “lopxe” and that it is well established that where the relevant trademark is recognizable within the Disputed Domain Name, the addition of descriptive, geographical, pejorative, meaningless, or other terms would not prevent a finding of confusing similarity. As the dominant feature of the Disputed Domain Name consists of Complainant’s mark MICHELIN, the addition of the term “lopxe” is insufficient to avoid confusing similarity between the Disputed Domain Name and Complainant’s trademark. Complainant refers to Pandora A/S v. Domain Admin, Privacy Protect LLC (PrivacyP), WIPO Case No. D2018-0586.
Complainant also submits that the extension “.com” is not to be taken into consideration when examining the identity or similarity between Complainant’s trademark and the Disputed Domain Name as it is viewed as a standard registration requirement. It refers to, L’Oréal v. Tina Smith,WIPO Case No. D2013-0820 and Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877.
Accordingly, Complainant submits, by registering the Disputed Domain Name, Respondent has created a likelihood of confusion with Complainant’s trademark and that it is likely that it could mislead Internet users into thinking that it is, in some way, associated with Complainant.
Therefore, Complainant submits that the Disputed Domain Name is confusingly similar to the trademark MICHELIN in which it has rights, and therefore the condition of Paragraph 4(a)(i) is fulfilled. B. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))
Complainant submits that Respondent is neither affiliated with Complainant in any way nor has it been authorized by Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. Furthermore, Respondent cannot claim prior rights or legitimate interest in the Disputed Domain Name as the MICHELIN trademark precedes the registration of the Disputed Domain Name by many years.
It states that Respondent is not commonly known by the Disputed Domain Name or the name “Michelin”, in accordance with paragraph 4(c)(ii) of the Policy.
It also states that Respondent cannot assert that, before any notice of this dispute, it was using, or had made demonstrable preparations to use the Disputed Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. The Disputed Domain Name was resolving to a default page (at the time of filing the Complaint), which does not constitute active use of the Disputed Domain Name.
Complainant submits that the Disputed Domain Name is confusingly similar to its MICHELIN trademark that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Disputed Domain Name and refers to panel decisions supporting this contention.
Complainant also submits that Respondent cannot assert that it has made or is currently 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 or service mark at issue, in accordance with paragraph 4(c)(iii) of the Policy and consequently there is no indication that Respondent is using, or is intending to use, the Disputed Domain Name, in a legitimate, noncommercial or fair use manner.
Additionally, Complainant states, Respondent never answered Complainant’s letter despite Complainant’s reminders. Panels have repeatedly stated that, when respondents do not avail themselves of their rights to respond to Complainant, it can be assumed that respondents have no rights or legitimate interest in the Disputed Domain Name referring to, AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017.
Finally, Complainant contends, given Complainant’s goodwill and renown worldwide, and the nature of the Disputed Domain Name, which is confusingly similar to Complainant’s trademark, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the Disputed Domain Name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights.
For all of the above-cited reasons, Complainant submits that it is established that Respondent has no rights or legitimate interests in respect to the Disputed Domain Name under Paragraph 4(a)(ii) of the Policy. C. The Disputed Domain Name was registered and is being used in bad faith. (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Complainant states that paragraph 4(a) (iii) of the Policy requires Complainant to prove that Respondent registered and used the Disputed Domain Name in bad faith. Complainant states that 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 it had no rights or legitimate interest and that it is implausible that Respondent was unaware of Complainant when it registered the Disputed Domain Name.
Firstly, Complainant states, it is well-known throughout the world and as stated above many panels have previously acknowledged Complainant’s reputation worldwide, making it unlikely that Respondent was not aware of Complainant’s rights in the said trademark.
Complainant refers to a prior case involving a similar domain name , in which the panel found that the nature of the domain name reproducing Complainant’s trademark MICHELIN and associating it to the Vietnamese term “lopxe” (tyre in English) makes a direct reference to Complainant and its main line of business. This clearly demonstrates that Respondent registered the Disputed Domain Name based on the attractiveness of Complainant’s mark to divert Internet traffic to its website and refers to Compagnie Générale des Etablissements Michelin v. GMO-Z.com RUNSYSTEM, GMO-Z.com RUNSYSTEM JSC / Hoang Hai,WIPO Case No. D2018-1511.
In addition, Complainant states that its MICHELIN trademark registrations significantly predate the registration date of the Disputed Domain Name and that under Section 2 of the ICANN Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. It means that it was Respondent’s duty to verify that the registration of the Disputed Domain Name would not infringe the rights of any third party before registering it.
Complainant states that a quick MICHELIN trademark or Google search would have revealed to Respondent the existence of Complainant and its trademark and that Respondent’s failure to do so is a contributory factor to its bad faith. Complainant contends that it is most likely that Respondent registered the Disputed Domain Name based on the notoriety and attractiveness of Complainant’s trademark to divert Internet traffic to its website. It is inconceivable that Respondent did not have Complainant’s trademark in mind at the time of registration of the Disputed Domain Name.
Consequently, Complainant submits, it is established that Respondent registered the Disputed Domain Name in bad faith.
Complainant contends that, even though the Disputed Domain Name resolves to a page under construction, which can be considered as an inactive page, this state of inactivity does not mean that the Disputed Domain Name is used in good faith. Passive holding does not preclude a finding of bad faith. Complainant refers to Telstra Corporation Limited v. Nuclear Marshmallows, -WIPO Case No. D2000-0003 in which the panel concluded that respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by respondent because: (1) Complainant’s trademark had a strong reputation and was widely known; (2) respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.
It has not provided any evidence of actual or contemplated use in good faith of the Disputed Domain Name and has not replied to the cease-and-desist letter and reminders Complainant sent. Indeed, Complainant states, Respondent did not provide any explanation of its choice in the Disputed Domain Name and decided to renew it despite having been requested by Complainant to transfer it. Such behavior, Complainant contends, has already been considered as an inference of bad faith by previous panels and refers to Bayerische Motoren Werke AG v. (This Domain Is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Finally, Complainant submits, given Complainant’s goodwill and renown worldwide, and the nature of the Disputed Domain Name, which is confusingly similar to Complainant’s trademark, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the Disputed Domain Name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights and therefore confirm that the Disputed Domain Name is used in bad faith.
Consequently, Complainant contends, it is established that Respondent both registered and used the Disputed Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. B. Respondent
Respondent acknowledged receipt of the Notification of Complaint and Commencement of Administrative Proceeding by sending an e-mail communication to the WIPO Center on March 15, 2019 stating:
“Hello, This is owner of this domain. I really feel tired of your emails. I think this is the legal domain, I searched, this domain is available on Godaddy and I can buy them. If you want to protect your brand, you should search and buy all related domains before. You cannot wait until I bought them and find me to compaint that, this is protected name. It’s not fair and not professional actions. What do you want in this case? Regards, Quyet”
The Respondent’s communication with the Center merely defer discussion of the issues. It cannot be construed as a Response, as it does not substantively provide defense to Complainant’s claims. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by Complainant to obtain relief. These elements are:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
In the absence of a substantive Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, Complainant bears the onus of proving its case on the balance of probabilities. Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name. A. Identical or Confusingly Similar
The Panel accepts that Complainant and its trademark MICHELIN enjoy a worldwide reputation and that Complainant owns numerous MICHELIN trademark registrations around the world including in Viet Nam, which is relevant as lopxe is Vietnamese for “tyre” and seems to be where Respondent it located.
The Panel accepts that Complainant operates, among others, the domain name registered on December 1, 1993; reflecting its trademark in order to promote its services.
The Panel accepts that the Disputed Domain Name reproduces Complainant’s trademark MICHELIN in its entirety, which previous panels have considered to be “well-known” or “famous”. An example of this is Compagnie Générale des Etablissements Michelin v. Kanoksak Puangkham,WIPO Case No. D2018-2331.
Panels considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to Complainant’s trademark such as in L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang,WIPO Case No. D2011-1627.
The Panel accepts that the Disputed Domain Name associates Complainant’s trademark MICHELIN with the descriptive term “lopxe” and that the addition of the term “lopxe” is insufficient to avoid confusing similarity between the Disputed Domain Name and Complainant’s trademark. Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of descriptive, geographical, pejorative, meaningless, or other terms would not prevent a finding of confusing similarity as found in Pandora A/S v. Domain Admin, Privacy Protect LLC (PrivacyP) / Robin Puckett,WIPO Case No. D2018-0586.
The extension “.com” is not to be taken into consideration when examining the identity or confusingly similarity between Complainant’s trademark and the Disputed Domain Name, as it is viewed as a standard registration requirement and the mere addition of a gTLD such as “.com” is irrelevant as it is well established that the generic Top Level Domain is insufficient to avoid a finding of confusing similarity as found in L’Oréal v Tina Smith,WIPO Case No. D2013-0820.
Therefore, the Disputed Domain Name is confusingly similar to the trademark MICHELIN in which Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts that Respondent is neither affiliated with Complainant in any way nor has it been authorized by Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark and that Respondent cannot claim rights or legitimate interests in the Disputed Domain Name as the MICHELIN trademark precedes the registration of the Disputed Domain Name by many years.
The Panel accepts that Respondent is not commonly known by the Disputed Domain Name or the name “Michelin”.
The Panel accepts that Respondent cannot assert that, before any notice of this dispute, it was using, or had made demonstrable 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 and that the Disputed Domain Name is resolving to a page under construction which does not constitute active use of the Disputed Domain Name.
The Panel accepts that the Disputed Domain Name is so confusingly similar to the MICHELIN trademark of Complainant that Respondent cannot reasonably pretend that it was intending to develop a legitimate activity.
In the absence of any license or permission from Complainant to use such widely known trademarks, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed as found in LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Hostmaster,WIPO Case No. D2010-0138.
The Panel accepts that Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain.
The Panel accepts that Respondent never answered Complainant’s letter despite Complainant’s reminders and that when respondents do not avail themselves of their rights to respond to Complainant, it can be assumed that respondents have no rights or legitimate interest in the disputed domain name as found in AREVA v. St James Robyn,WIPO Case No. D2003-0269.
The Panel also accepts that, given Complainant’s goodwill and renown worldwide, and the nature of the Disputed Domain Name, which is confusingly similar to Complainant’s trademark, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the Disputed Domain Name, as it would result in misleading diversion and taking unfair advantage of Complainant’s rights.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect to the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel accepts that bad faith can be found where a respondent “knew or should have known” of a complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interests and refers to the findings in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320.
The Panel considers that it is inconceivable that Respondent was unaware of Complainant when it registered the Disputed Domain Name as Complainant is well-known throughout the world and Respondent added the Vietnamese word for tyre.
In a prior case involving a similar disputed domain name (), the panel found that the nature of the disputed domain name reproducing Complainant’s trademark MICHELIN and associating it to the Vietnamese term “lopxe” (tyre in English) makes a direct reference to Complainant and its main line of business. The Panel accepts that this demonstrates that Respondent registered the Disputed Domain Name based on the attractiveness of Complainant’s mark to divert Internet traffic to its website as found in Compagnie Générale des Etablissements Michelin v. GMO-Z.com RUNSYSTEM, GMO-Z.com RUNSYSTEM JSC / Hoang Hai,WIPO Case No. D2018-1511.
In addition, the Panel accepts that Complainant’s MICHELIN trademark registrations significantly predate the registration date of the Disputed Domain Name.
Under Section 2 of the Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party therefore Respondent’s representation was misleading as was found in Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART,WIPO Case No. D2009-0901.
The Panel accepts that, even if Respondent had not known of Complainant, it could easily have found out about it and that Respondent was using the notoriety and attractiveness of Complainant’s trademark to divert Internet traffic to its website.
The Panel therefore finds that Respondent registered the Disputed Domain Name in bad faith.
The Panel notes that the Disputed Domain Name resolves to a page under construction. This can be considered an inactive page but this does not mean that it is used in good faith. Passive holding does not preclude a finding of bad faith. 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, can be taken into account as was found in Cleveland Browns Football Company LLC v. Andrea Denise Dinoia,WIPO Case No. D2011-0421.
Previous Panels have already found 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 behavior.
This was found in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) in which the Panel concluded that Respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by Respondent.
The Panel accepts that Complainant and its trademark MICHELIN have a strong reputation and are widely known throughout the world and that in view of the notoriety of Complainant and the nature of the Disputed Domain Name including the Vietnamese term “lopxe” (tyre in English), no possible use in good faith is conceivable.
Also the Panel accepts that Respondent has not provided any evidence of actual or contemplated use in good faith of the Disputed Domain Name and did not reply to the cease-and-desist letter and reminders Complainant sent. It did not provide any explanation of its choice in the Disputed Domain Name and decided to renew it anyway despite having been requested by Complainant to transfer it. Such behaviour has already been considered as an inference of bad faith by previous panels, Bayerische Motoren Werke AG v. (This Domain Is For Sale) Joshuathan Investments, Inc.WIPO Case No. D2002-0787.
Given Complainant’s goodwill and renown worldwide and the nature of the Disputed Domain Name specifically referring to tyres and which is confusingly similar to Complainant’s trademarks, it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use it.
The Panel therefore finds that the Disputed Domain Name is used in bad faith.
Consequently, the Panel finds that Respondent both registered and used the Disputed Domain Name 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 be transferred to Complainant.
Isabel Davies
Sole Panelist
Date: April 22, 2019
Full & Egal Universal Law Academy