The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 1246531324, Canada / Mark Hanez, Saudi Arabia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2020. On September 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2020 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 September 29, 2020. 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 of the Complaint, and the proceedings commenced on October 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2020. The Center appointed Ellen B Shankman as the sole panelist in this matter on November 11, 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 The date of the Domain Name registration was confirmed by the Registrar to be February 22, 2020. The trademark MICHELIN serves as house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions worldwide. The Complainant owns, inter alia, Canadian trademark MICHELIN No. TMA629284, filed on June 14, 2001, registered on January 4, 2005, duly renewed, and covering goods and services in classes 3, 5, 7, 8, 9, 11, 12, 16, 18, 20, 21, 24, 25, 39, 43; Canadian trademark MICHELIN No. TMA214191, filed on February 28, 1974, registered on June 11, 1976, duly renewed, and covering goods and services in classes 35, 36, 39, 40, 41, 44, 45; United States of America trademark MICHELIN No. 4126565, filed on January 19, 2011, registered on April 10, 2012 and covering goods and services in classes 36, 37, 39. In addition, the Complainant operates, among others, the following domain name reflecting its trademark in order to promote its services: - The Complainant has provided evidence that the MICHELIN trademark has also had extensive coverage and use. The trademark predates the date of the Domain Name registration for a very broad variety of goods and services in the travel industry. The Panel also conducted an independent search to determine that the Domain Name resolve to a page with an error message, and the website currently appears to be inactive. Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties’ Contentions A. Complainant The Complainant is Compagnie Générale des Etablissements Michelin (“Michelin”), a leading tire company, which is dedicated to enhancing its clients’ mobility, sustainably, designing and distributing the most suitable tires, services and solutions for its clients’ needs, providing digital services, maps and guides to help enrich trips and travels and make them unique experiences, and developing high-technology materials that serve the mobility industry. Headquartered in Clermont-Ferrand, France, Michelin is present in 171 countries, has more than 114,000 employees and operates 69 tire manufacturing facilities and sales agencies in 17 countries. The Michelin Guide was first launched in 1920 in order to help motorists plan their trips - thereby boosting car sales and in turn, tyre purchases. In 1926, the guide began to award stars for fine dining establishments, initially marking them only with a single star. Five years later, a hierarchy of zero, one, two, and three stars was introduced, and in 1936, the criteria for the starred rankings were published. For the first time, the Michelin Guide included a list of hotels in Paris, lists of restaurants according to specific categories, as well as the abandonment of paid-for advertisements in the guide. During the rest of 20th century, thanks to its serious and unique approach, the Michelin Guides became best-sellers without equals: the guide now rates over 30,000 establishments in over 30 territories across three continents, and more than 30 million Michelin Guides have been sold worldwide. In 2001, ViaMichelin was set up to develop digital services for travel assistance. These free services give users all the useful information they need to prepare their trips. Digital services were developed in the 2010’s, with the launch of the Michelin Restaurants website in 2012, and of the Michelin Mobility Apps in 2013. This package of 6 free apps met the needs of travelers in all their travels: Michelin MyCar, Michelin Navigation, ViaMichelin, Michelin Restaurants, Michelin Hotels and Michelin Travel. In addition, the Complainant asserts that MICHELIN Aircraft Tyres provide bias tires, radial tires, and tubes for aviation customers around the world, in a range of applications including commercial and regional airlines, general aviation and military aviation. Michelin technology’s working with the biggest companies and constructors in the world (Airbus, Boeing, Bombardier, Comac, Dassault, Embraer, Gulfstream, Hondajet, Lockheed Martin, Pilatus, Sukhoï, Textron). Michelin has 50 years of experience in aircraft tire production and 250 customers. The Complainant works alongside 90 percent of the top 20 airlines companies. Almost 50 percent of commercial aircrafts land with Michelin tires. Michelin has aviation operations in 87 countries. Over 3 million radial aircraft tires have been manufactured. Michelin has confronted challenges faced by the aerospace industry. It has pioneered new technology, seeking to development offerings that provide greater mobility solutions. Michelin continues to offer the best in aircraft tire innovations and safety. The Complainant alleges that when it became aware of the Respondent’s registration of the Domain Name which entirely reproduces its well-known trademark MICHELIN associated with the generic term “aviation”, and although it points to an error page, several email servers are configured on the Domain Name which enhances the risk of misuse the Complainant attempted to resolve this matter amicably, to no avail. The Domain Name is confusingly similar to the Complainant’s trademark, and the adjunction of the term “aviation” is insufficient to avoid confusing similarity between the Domain Name and the Complainant’s trademark. On the contrary, the full inclusion of the Complainant's trademark MICHELIN in the Domain Name, in combination with the generic term “aviation” enhances the false impression that the Domain Name is somehow officially related to the Complainant. Indeed, the Domain Name is likely to confuse Internet users into believing that the Domain Name will direct them to the website endorsed by the Complainant or is in some way associated with the Complainant, since this is the field of activity of the Complainant. In addition, the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the 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 Domain Name, as the MICHELIN trademark precedes the registration of the Domain Name for years. The Complaint further argues that bad faith can be found where the Respondent “knew or should have known” of the Complainant’s trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interest. It is implausible that the Respondent was unaware of the Complainant when he registered the Domain Name. The composition of the Domain Name which entirely reproduces the Complainant’s trademark MICHELIN and associates it to the generic term “aviation”, thus making reference to the Complainant’s activities confirms that the Respondent was aware of the Complainant and its trademark thus suggesting opportunistic bad faith. Further the Complainant asserts that the Respondent has constructive notice of the rights of the Complainant in the MICHELIN trademark because of the latter's widespread use, registrations and reputation of the mark. The Complainant asserts that there cannot be any doubt that the Respondent was aware of the reputation of the Complainant in the trademark MICHELIN prior to the registration of the Domain Name. That the Respondent did not reply to the cease-and-desist letter and reminders, as well as hiding his identity after receipt of the letter, should be considered as additional inference of bad faith. Moreover, the Domain Name resolves to an inactive page. The Respondent has not made any reasonable and demonstrable preparations to use the Domain Name. Consequently, the Complaint argues that the Respondent fails to show any intention of non-commercial or fair use of the Domain Name. It is most likely to be believed that the Respondent has no legitimate interests or rights in the Domain Name. The Complainant argues that as indicated in section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0.”), “Even where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. In the present case, the Domain Name associates the Complainant’s trademark MICHELIN specifically with the term “aviation”. This constitutes clear evidence that the Respondent wishes to give an overall impression that the Domain Name is endorsed by the Complainant. Such composition cannot constitute fair use. Finally, several e-mail servers have been configured on the Domain Name and thus, there might be a risk that Respondent is engaged in a phishing scheme. Therefore, the use of an email address with the Domain Name presents a significant risk where the Respondent could aim at stealing valuable information such as credit cards from the Complainant’s clients or employees. To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark MICHELIN, in respect of a very broad range of travel goods and services, including aviation related goods. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the word “aviation” adds to the confusion as the Complainant is in that field of activity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, and constitutes opportunistic bad faith registration and use. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) That the Domain Name has been registered and used in bad faith The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for MICHELIN. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the descriptive term “aviation” to the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Section 1.8 of the WIPO Overview 3.0, cases cited therein This finding is consistent with previous panels which have considered the Complainant’s mark to be “well-known” or “famous” (WIPO Case No. D2019-0553, Compagnie Générale des Etablissements Michelin v. World Industrial, LNQ;WIPO Case No. D2018-2331, Compagnie Générale des Etablissements Michelin v. Kanoksak Puangkham,WIPO Case No. D2017-0234; Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios;WIPO Case No. D2014-1240, Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu;WIPO Case No. D2013-1418, Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang;WIPO Case No. D2012-0634, Compagnie Générale des Etablissements Michelin v. Milan Kovac/Privacy--Protect.org; WIPO Case No. D2012-0384, Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev, andWIPO Case No. D2015-1671 Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy, Compagnie Générale des Etablissements Michelin v. Cameron David Jackson). Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. The Panel is persuaded by the Complainant’s arguments that the Respondent’s Domain Name is targeted to an association with the Complainant’s reputation, and thus, the Respondent intentionally attempts to attract Internet users for commercial gain. The addition of the term “aviation” only increases the likelihood of confusion and the probability is that they were meant to confuse Internet users as to source or affiliation. The Panel finds that the registration of Domain Name based on well-established marks at the time of registration and the Domain Name was selected in knowledge of the Complainant’s mark and brand, and further the disputed Domain Name was chosen in order to capitalize on Internet traffic intended for the Complainant’s website. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name or to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. In light of the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark MICHELIN and uses it for the purpose of misleading and diverting Internet traffic, and to capitalize on any confusion with the Complainant. This finding is consistent with previous UDRP decisions which have considered the Complainant’s mark to be “well-known” or “famous” (Compagnie Générale des Etablissements Michelin v. World Industrial, LNQ,WIPO Case No. D2019-0553; Compagnie Générale des Etablissements Michelin v. Kanoksak Puangkham,WIPO Case No. D2018-2331; Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios,WIPO Case No. D2017-0234; Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu,WIPO Case No. D2014-1240; Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang,WIPO Case No. D2013-1418; Compagnie Générale des Etablissements Michelin v. Milan Kovac/Privacy--Protect.org,WIPO Case No. D2012-0634; Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev,WIPO Case No. D2012-0384; and Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy, Compagnie Générale des Etablissements Michelin v. Cameron David Jackson,WIPO Case No. D2015-1671). Further, the Panel finds that the registration of the Domain Name with the use of the privacy registration for supports such inference. This is consistent with Section 3.6 of the WIPO Overview 3.0, which states that: “There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith. In terms of underlying respondent identity, panels treat privacy and proxy services as practical equivalents for purposes of the UDRP, and the fact that such services may be employed to prevent the complainant and panel from knowing the identity of the actual underlying registrant of a domain name does not prevent panel assessment of the UDRP elements. Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference.” In this case, no such inference was refuted by the Respondent. In addition, it has been held in previous UDRP cases that knowledge of a corresponding mark at the time of the domain name’s registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464 and Bartercard Ltd & Bartercard International Pty Ltd. V. Ashton-Hall Computer Services,WIPO Case No. D2000-0177. The Panel also finds that even though the Domain Name currently resolves to an inactive page, this not preclude a finding of registration and use in bad faith where: “…it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate” (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). This is also consistent with Section 3.3 of the WIPO Overview 3.0, which states: “From the inception of the UDRP, panelists 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. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Moreover, e-mail servers have been configured on the Domain Name and thus, there might be a risk that Respondent is engaged in a phishing scheme. Therefore, the Panel agrees with the Complainant that the use of an email address with the Domain Name presents a significant risk where Respondent could aim at stealing valuable information such as credit cards from Complainant’s clients or employees. Such risk has been recognised by prior UDRP panels (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). Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name Ellen B Shankman
-
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Sole Panelist
Date: November 16, 2020
Full & Egal Universal Law Academy