Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
Respondent is Eduard Wolowitz, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2020, 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 April 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 7, 2020. The Center appointed Phillip V. Marano as the sole panelist in this matter on May 22, 2020. 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 a French multinational tire manufacturer that is also known for its travel guides, roadmaps, and Michelin stars awarded to restaurants. Complainant owns valid and subsisting registrations for the MICHELIN trademark in numerous countries, including European Union and International trademark registrations with effect in the Czech Republic, with the earliest priority dating back to July 24, 1968. Respondent registered the disputed domain name on February 4, 2019. At the time of this Complaint, the disputed domain name redirected to a parking page on the “www.tokendomains.io” website which advertises, “Are you interested in this domain? Send us an offer (/Domain/3478/SendOffer).” 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the MICHELIN trademark and has adduced evidence of trademark registrations in numerous regions and countries around the world including in the Czech Republic where registration data indicates Respondent is located, with earliest priority dating back to July 24, 1968. The disputed domain name is confusingly similar to Complainant’s MICHELIN trademark, according to Complainant, because it reproduces the MICHELIN trademark in its entirety, which previous UDRP panels have found to be “well-known” or “famous”, and the adjunction of the term “token” is insufficient to avoid confusing similarity. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any prior rights in the disputed domain name; the lack of any evidence that Respondent is known by the name Michelin; Respondent’s attempt to give an overall impression that the disputed domain name is endorsed by Complainant; the goodwill and renown worldwide of Complainant, making legitimate uses implausible; and Respondent’s offer to sell the disputed domain name, which is not in itself a use in connection with a bona fide offering of goods and services and cannot confer any noncommercial or fair use. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the implausibility that the disputed domain name was registered or used in good faith given that Complainant is well-known throughout the world; Respondent could have performed a quick trademark search or Google search and revealed the existence of Complainant; Respondent’s use of the disputed domain name to redirect to a page where it is possible to post an offer to buy the disputed domain name in an attempt to benefit from the fame of the MICHELIN trademark; Respondent’s configuration of an email server, meaning that Respondent may be engaged in a phishing scheme; and Respondent’s failure to reply to cease and desist letters and reminders from Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i. the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; ii. Respondent has no rights or legitimate interests in respect of the disputed domain name; and iii. the disputed domain name has been registered and is being used in bad faith. Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0 , section 1.2.1 . Complainant submitted evidence that the MICHELIN trademark has been registered in numerous regions and countries with priority dating back to July 24, 1968, decades before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the MICHELIN trademark have been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s MICHELIN trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s MICHELIN trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0 , section 1.7 . (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n 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...”). gTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 . The confusing similarity is not dispelled by combination with the dictionary term “token”. WIPO Overview 3.0 , section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”), OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam,WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”). In view of the foregoing, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1. It is evident that Respondent, identified by registration data for the disputed domain name as Eduard Wolowitz, is not commonly known by the disputed domain name or Complainant’s MICHELIN trademark. Based on the undisputed facts and circumstances in the record before it, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. This is especially the case where a disputed domain name is so obviously connected with a complainant and its products, the very use, let alone monetize or sell, by a registrant with no connection to the complainant suggests opportunistic bad faith. The Panel concludes from the record that Respondent had Complainant’s MICHELIN trademark in mind when registering the disputed domain name, and that Respondent most likely registered the disputed domain name in order exploit and profit from Complainant’s trademark rights. In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name and Respondent’s attempt to sell the disputed domain name in opportunistic bad faith, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i. circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or iv. by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Registration of the disputed domain name with intent to profit by exploiting Complainant’s trademark and selling that disputed domain name constitutes axiomatic bad faith registration and use under paragraph 4(b)(i) of the Policy. As in this case, bad faith is evident where Respondent clearly has knowledge of Complainant’s MICHELIN trademarks and Respondent offers to sell the disputed domain name to the highest bidder or otherwise to the general public. WIPO Overview 3.0 , section 3.1.1 . Specifically, Respondent placed on its website the following public solicitation to sell the disputed domain name, “Are you interested in this domain? Send us an offer (/Domain/3478/SendOffer).” The record is devoid of any evidence to suggest that this solicitation excluded offers far in excess of any conceivable or apparent registration costs, falling well within paragraph 4(b)(i) of the Policy. Respondent’s solicitation is clear evidence of Respondent’s opportunistic bad faith intention to acquire and sell the disputed domain name, which is confusingly similar to Complainant’s MICHELIN trademark. The Panel further concludes that failure by Respondent to answer Complainant’s cease and desist letter “suggests that Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.” See America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460 (internal citations omitted). See also Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises,WIPO Case No. D2008-1003. Furthermore, the failure of Respondent to answer this Complaint or take any part in the present proceedings, in the view of the Panel, is another indication of bad faith on the part of Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. Finally, the Panel considers configuration of an email server on the disputed domain name as additional evidence that the disputed domain name has been registered and used in bad faith. The disputed domain name contains in its entirety Complainant’s MICHELIN trademark, and the record is devoid of any evidence to suggest that Respondent has any legitimate interest in sending emails from the disputed domain name. Conversely, Complainant has made a plausible argument that Respondent’s proactive configuration of an email server, creates a risk that Respondent is engaged in a phishing scheme, thereby using an email address associated with Complainant to try to steal valuable financial or other confidential information from Complainant’s clients or employees. Prior UDRP panel determinations have recognized the same risk, and considered it as additional evidence of bad faith. See e.g. Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj,WIPO Case No. D2017-1225; Carrefour S.A. v. WhoisGuard, Inc / Gaudet Jose, Case No. DCO2018-0041 (“The Panel concurs with the Complainant that the connection of the disputed domain name with an email server configuration enhances a likelihood of confusion and presents a risk that the Respondent is engaged in a phishing scheme.”) In view of Respondent’s attempts to sell the disputed domain name most likely in excess of Respondent’s out-of-pocket costs, Respondent’s failure to respond to Complainant’s cease and desist correspondence or this Complaint, and Complainant’s credible argument that Respondent’s proactive configuration of an email server creates a risk of phishing for sensitive financial data, the Panel concludes that Complainant has established the third element 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 disputed domain name Phillip V. Marano
Sole Panelist
Date: June 8, 2020
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