Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
Respondent is Perfect Privacy, LLC, United States of America / Milen Radumilo, Romania. 2. The Domain Names and Registrars
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2020. On April 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 7, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name 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 Respondent of the Complaint, and the proceedings commenced on May 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 10, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on June 18, 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 multinational company headquartered in France that has been manufacturing and selling tires for automobiles since the year 1889. It has a commercial presence in 171 countries, employs over 114,000 employees and operates 69 major manufacturing facilities in 17 countries. Complainant owns European Union trademark registration number 001791243 for its MICHELIN trademark, which was registered on October 24, 2001. It also owns and operates the website located at the Complainant also provides a range of digital services since 2001 under its MICHELIN brand. Complainant owns and operates websites at the The disputed domain names Complainant asserts that the disputed domain names are confusingly similar to its MICHELIN trademarks (“Complainant’s Marks”) because they reproduce almost identically and entirely the MICHELIN trademarks. Complainant argues that the disputed domain names are intentional misspellings of the MICHELIN trademark, noting that the disputed domain name Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain names. According to Complainant, Respondent cannot claim to be making any legitimate noncommercial or fair use of the disputed domain names because Complainant’s use and registration of its MICHELIN mark precede the disputed domain names’ registration, and they merely resolve to parked pages displaying PPC links regarding services highly similar to those offered under Complainant’s Marks. Moreover, Complainant further argues that Respondent’s attempted sale of the disputed domain names cannot be considered a legitimate noncommercial or fair use. Complainant also alleges that Respondent is not commonly known by the disputed domain names, is not associated or affiliated to Complainant in any way, and was never licensed or authorized to use Complainant’s Marks. Lastly, Complainant alleges that Respondent registered and used the disputed domain names in bad faith. According to Complainant, Respondent must have had constructive or actual knowledge of Complainant’s Marks given their worldwide notoriety, the existence of its trademark registration for the MICHELIN mark at the time the disputed domain names were registered, and the almost identical reproduction of the MICHELIN marks in both disputed domain names. Complainant further argues that Respondent’s attempt to sell the disputed domain names in excess of out of pocket expenses is compelling evidence of Respondent’s bad faith since it represents Respondent’s intent of capitalizing on the fame and notoriety of Complainant’s Marks. Lastly, Complainant asserts that Respondent is a well-known cyber-squatter that has been the subject of a number of UDRP proceedings, which provides further evidence of Respondent’s pattern of bad faith behavior. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 3(c) of the UDRP Rules allows a complaint to relate to more than one domain name provided that the domain names are registered by the same domain-name holder. Complainant has provided clear evidence that Respondent is the registrant for both disputed domains, thus justifying joining the disputed domain names in this sole proceeding. Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names were registered and are being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) 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.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the MICHELIN trademark, including through its European Union registration. Therefore, Complainant undoubtedly has rights in the MICHELIN mark. With Complainant’s rights in the MICHELIN mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) are identical or confusingly similar to Complainant’s Marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and 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 disputed domain name. Id. Here, the disputed domain name The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain names are confusingly similar to Complainant’s Marks. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain names. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or 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; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) 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 trade mark or service mark at issue. As expressed in previous UDRP decisions, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. WIPO Overview 3.0, section 2.2. Furthermore, UDRP panels applying paragraph 4(c) have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9. In this case, the Panel finds that the Complainant has made out a prima facie case. Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of them. Both disputed domain names resolve to websites displaying PPC links regarding services that compete with services Complainant offers under its MICHELIN mark. Displaying links offering services highly similar to those being offered under Complainant’s Marks through domain names which are almost identical to Complainant’s Marks clearly shows that Respondent is attempting to capitalize on the goodwill and reputation of Complainant’s Marks and thus cannot be considered a bona fide offering of goods and services nor noncommercial or fair use. Respondent has not submitted any arguments or evidence to rebut the Complainant’s contention that it has never authorized, licensed or permitted Respondent to use Complainant’s Marks in any way. There is also no evidence on record suggesting that Respondent is commonly known by the disputed domain names. Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or a legitimate interest in the disputed domain names within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(i) that bad faith registration and use can be found when a respondent registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name. Paragraph 4(b)(ii) of the Policy indicates that bad faith use and registration can also be found if a respondent is shown to have registered the domain in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. The Policy also indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. UDRP panels have found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.” WIPO Overview 3.0, section 3.1.4. In this case, bad faith can be found in the registration of the disputed domain names. Complainant provided ample evidence showing widespread use MICHELIN mark that long predates Respondent’s registration of the disputed domain names. Complainant also provided evidence of an European Union trademark registration it owns for the MICHELIN mark that was in force at the moment the disputed domain names were registered. Since an European Union trademark registration is enforceable in Romania, Respondent’s alleged country of domicile according to the registrant information on record, Respondent was likely aware of Complainant’s Marks when it registered the disputed domain names, or knew or should have known that they were identical or confusingly similar to Complainant’s Marks. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Furthermore, UDRP panels have also consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4; see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Since the disputed domain names consist of obvious typographical errors of Complainant’s Marks, bad faith registration of the disputed domain names can be presumed. The disputed domain names were also used in bad faith. Complainant provided clear evidence that Respondent attempted to sell the disputed domain names for valuable consideration in excess of out-of-pocket costs directly related to the domain name, which is evidence of bad faith under Policy paragraph 4(b)(i). Both disputed domain names also resolved to websites displaying PPC links regarding services similar or identical to those services offered under Complainant’s Marks. This is clear evidence that Respondent is engaging in a typo-squatting efforts to attract Internet users, for commercial gain, to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a product or service on Respondent’s websites. Respondent has also engaged in a pattern of registering and using domain names that are variations of known third-party trademarks, which makes the existence of bad faith use and registration of the disputed domain names ever more likely. UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. WIPO Overview 3.0, section 3.1.2. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names. Id. Complainant cited at least four other UDRP proceedings where Respondent was found to have been engaging in bad faith conduct targeting trademarks. The Panel independently confirmed that Respondent has been the losing respondent in those UDRP proceedings. That some of the panelists in those UDRP proceedings also explicitly noted that Respondent has been named in various other similar proceedings makes it even more probable that Respondent has been engaging in a pattern of bad faith registration of domain names. Here, the fact that Respondent registered the two disputed domain names both targeting Complainant, is simply additional evidence of such pattern. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain names were in bad faith, pursuant to paragraphs 4(b)(i), (ii), and (iv) 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 names, Brian J. Winterfeldt
Sole Panelist
Date: July 2, 2020
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