Complainant is Compagnie Générale des Etablissements Michelin (the “Complainant”), France, represented by Dreyfus & associés, France.
Respondent is Keiyu Nishiya, Japan (the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2020. On October 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 15, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on October 19, 2020. On October 15, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On October 16, 2020, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding. 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 in English and Japanese of the Complaint, and the proceedings commenced on October 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2020. The Center appointed Haig Oghigian as the sole panelist in this matter on January 4, 2021. 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 Panel finds the following as uncontested facts: Complainant is Compagnie Générale des Etablissements Michelin (“Michelin”), a leading tire company, number 1 worldwide for tires, 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 (Annex 3). Headquartered in Clermont-Ferrand, France, Complainant is present in 171 countries, including Japan, has 114,000 employees and operates 69 tire manufacturing facilities (Annex 3). Since 1889, Complainant has innovated constantly to facilitate the mobility of people and goods, thus contributing to the advancement of human progress. Today, the Group is the leader in tire technology for every type of vehicle, leveraging its expertise in high-tech materials to deliver services and solutions that increase travel efficiency and products that enable customers to enjoy unique mobility experiences. The Michelin brand is the top-selling tire brand worldwide and it is the No. 1 source of innovation in the global tire industry (Annex 3). 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 (Annex 3). 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 (Annex 3). In 2015, ViaMichelin was deployed in 13 countries. Complainant’s main website for its ViaMichelin services is available at “www.viamichelin.com”. Complainant’s efforts to resolve this matter amicably. Complainant became aware of Respondent’s registration and use of the Disputed Domain Name The Disputed Domain Name was registered on February 10, 2020. The Disputed Domain Name resolves to a Japanese website entitled “MICHELIN BEAUTY” published by the company “MICHELIN BEAUTY JAPAN” describing itself as an “organization that aims to create a cosmetic guide specialized in beauty information, with the support of all”. Before starting the present proceeding, Complainant made some efforts to resolve this matter amicably. On March 23, 2020, Complainant sent a cease-and-desist letter to Respondent via the Registrar asserting its trademark rights and asking it to cease the use of the Disputed Domain Name and to transfer it to Complainant. Complainant also asked the Registrar to disclose the registrant identity and contact details (Annex 6). The Registrar responded, indicating a form that has to be used in order to transfer Complainant’s request to Respondent (Annex 6). Complainant tried to contact Respondent respecting the form indicated by Registrar. Complainant’s request via the Registrar was apparently relayed to the webhost who in turn informed Complainant that “We are afraid that we can not disclose our customer’s information unless we receive an official order from WIPO, courts, governmental agencies or law enforcement organizations in Japan. If you would like to send a message to the domain’s owner, we can forward it to our customer who is managing the domain name with us although we can not guarantee that you will receive a reply from the registrant or the administrative contact of the domain name.” Despite several reminders, no reply was obtained (Annex 6). As no amicable settlement could be found despite Complainant’s best efforts, Complainant had no other choice but to initiate an UDRP procedure against Respondent in order to obtain the transfer of the Disputed Domain Name. 5. Parties’ Contentions A. Complainant This Complaint is based on the following grounds: The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1)). Complainant and its trademark MICHELIN enjoy a worldwide reputation. Complainant owns numerous MICHELIN trademark registrations around the world. Complainant is in particular the owner of the following MICHELIN trademark registrations throughout the world (Annex 4): - International trademark registration MICHELIN No. 1245891, registered on December 10, 2014, covering goods and services in classes 35, 36, 39, 40, 41, 42, 44, and 45, and designating among others Japan; In addition, Complainant operates, among others, the following domain names reflecting its trademark in order to promote its services (Annex 5): - The disputed domain name 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 (WIPO Case No. D2011-1627, L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang,WIPO Case No. D2010-1059, Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin andWIPO Case No. D2000-0113, The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.). The domain name For all of the above-mentioned reasons, the domain name in dispute is confusingly similar to the trademark MICHELIN in which the Complainant has rights, and therefore it is submitted that the condition of Paragraph 4(a)(i) is fulfilled. The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2)) 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 domain name as the MICHELIN trademark precedes the registration of the disputed domain name for years (Annexes 1, 4, and 5). Respondent is not commonly known by the disputed domain name or the name “MICHELIN”, in accordance with paragraph 4(c)(ii) of the Policy. There is no evidence that Respondent may be commonly known by the name MICHELIN (Annex 1). Moreover, Respondent cannot assert that, before any notice of this dispute, it was using, or had made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. As mentioned, the disputed domain name, which incorporates Complainant’s trademark, points to a website offering beauty products for sale that are likely to be counterfeit goods (Annex1). Indeed, this cannot be considered as a use of the domain name in connection with a bona fide offering of goods and services. Additionally, Respondent never answered to Complainant’s letter despite Complainant’s reminders (Annex 6). 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 (WIPO Case No. D2010-1017, AREVA v. St James Robyn; WIPO Case No. D2003-0269, Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim). Finally, 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, it is undoubtedly established that Respondent has no rights or legitimate interests in respect to the domain name in dispute under Paragraph 4(a)(ii) of the Policy. The domain name was registered and is being used in bad faith. (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)) Registration in bad faith. 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 they had no rights or legitimate interest (WIPO Case No. D2009-0320, Research In Motion Limited v. Privacy Locked LLC/Nat Collicot; WIPO Case No. D2009-0113, The Gap, Inc. v. Deng Youqian). It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name. Firstly, Complainant is well-known throughout the world, including in the Japan where its manufacturing facilities are located (Annex 3). In this regard, many panels have previously acknowledged Complainant’s reputation worldwide, making it unlikely that Respondent was not aware of Complainant’s rights in said trademark. Secondly, the composition of the domain name Thirdly, Complainant’s MICHELIN trademark registrations significantly predate the registration date of the disputed domain name. In this regard, previous Panels have established that knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration (WIPO Case No. D2008-0287, Alstom v. Domain Investments LLC;WIPO Case No. D2007-0077, NBC Universal Inc. v. Szk.com). 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 Registrant’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain name (WIPO Case No. D2009-0901, Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART;WIPO Case No. D2002-0806, Carolina Herrera, Ltd. v. Alberto Rincon Garcia;WIPO Case No. D2000-1397, Nike, Inc. v. B.B. de Boer). A quick “MICHELIN” trademark search would have revealed to Respondent the existence of Complainant and its trademark. Respondent’s failure to do so is a contributory factor to its bad faith (WIPO Case No. D2008-0226, Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling). Even supposing that Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple search via Google or any other search engine using the keyword “MICHELIN” demonstrates that all first results relate to Complainant’s products or news (Annex 7). In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of Complainant and its trademark, as well as the high level notoriety of Complainant, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademark at the time of registration of the disputed domain name. It is most likely to be believed that Respondent registered the domain name Hence, in view of the above-mentioned circumstances, it is inconceivable that Respondent did not have Complainant’s trademark in mind at the time of registration of the disputed domain name. Consequently, it is submitted that Respondent registered the disputed domain name in bad faith. Use in bad faith. Some elements may be put forward to support the finding that Respondent also uses the domain name in bad faith. Previous panels have considered that in the absence of any license or permission from Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (WIPO Case No. D2008-0281, Alstom, Bouygues v. Webmaster;WIPO Case No. D2000-0055, Guerlain S.A. v. Peikang). As the disputed domain name is confusingly similar to Complainant’s trademark, previous panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site” (WIPO Case No. D2012-1765, MasterCard International Incorporated (“MasterCard”) v. Wavepass AS;WIPO Case No. D2006-1095, Edmunds.com, Inc. v. Triple E Holdings Limited). Moreover, email servers have been configured on the disputed domain name and thus, there might be a risk that Respondent is engaged in a phishing scheme (Annex 1). Therefore, the use of an email address with the disputed 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 panel (WIPO Case No. D2017-1225, Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj). Finally, 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. All aforementioned circumstances confirm that the disputed domain name is used in bad faith. Consequently, it is submitted that the 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 did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the language selection by giving full consideration to the parties’ level of comfort with each language, the expenses that may be incurred, the possibility of a delay in the proceeding if translations are required, and other relevant factors. The Registrar’s website displays its registration agreements both in English and Japanese. The language of the registration agreement of the Disputed Domain Name may thus be English or Japanese (Annex 2). In any event, the Complaint is submitted in English and Complainant requests that the language of proceedings be English for the following reasons. As indicated by a previous UDRP panel in the decision, Caiso Keisanki Kabushiki Kaisha dba Casio Computer Co., Ltd. v. Taizbou Kaixuan Entertainment Co. Ltd.,WIPO Case No. D2005-0870, “one important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties”. Here, Complainant is located in France and has no knowledge of Japanese. To proceed in this language, Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceedings. Consequently, the use of another language than English in the proceeding would impose a burden on Complainant, which must be deemed significant in view of the cost for the present proceedings. Many UDRP decisions have recognized that using the registration agreement’s language, which in the present case could be Japanese, would lay an undue burden on Complainant (L'Oréal v. Whois Privacy Protection Service by onamae.com / Motoko Fujii,WIPO Case No. D2016-0593). In many relevant UDRP decisions, the panels decided that since Complainant was unable to communicate in the language of the registration agreement, the proceeding would inevitably be delayed unduly, and Complainant would have to incur substantial expenses if Complainant were to submit all documents in said language (Communication Network Corporation v. Kaoru Tanaka, WIPO Case No. D2000-0445). Additionally, it should be noted that the Disputed Domain Name includes only Latin characters, which strongly suggests that Respondent has knowledge of languages other than Japanese. Moreover, today English is the primary language for international relations. In addition, previous UDRP decisions have allowed the language of proceeding be English even though the concerned registrar was GMO Internet, Inc. d/b/a Onamae.com (Instagram, LLC v. Masaki Shishino, WIPO Case No. D2019-2096 and Sodexo v. Whois Privacy Protection Service by VALUE-DOMAIN/Moto Sato, Personal, WIPO Case No. D2020-1552). In view of all the above-mentioned arguments and evidence, the Panel determines that the language of the present proceeding be English. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, the transfer of the Disputed Domain Name may be ordered if Complainant demonstrates three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iiii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Disputed Domain Name incorporates Complainant’s mark in its entirety with the addition of the letters “b” and “t”; it is therefore obviously recognizable. The WIPO Overview 3.0 states in 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.” The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s mark. B. Rights or Legitimate Interests No evidence exists to show that (i) Respondent’s use of the Disputed Domain Name relates to a bona fide offering of goods or services; (ii) Respondent is commonly known by the Disputed Domain Name; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. At no time has Complainant authorized Respondent to use their mark (or any sign that is identical with or confusingly similar to its mark) for the Disputed Domain Name or at all. There is also no evidence that Respondent is commonly known by the Disputed Domain Name or that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Finally, Respondent’s lack of rights or legitimate interests in the Disputed Domain Name may be inferred from Respondent’s failure to submit a response to the Complaint (see InterContinental Hotels Group PLC, Six Continents Hotels, Inc., Six Continents Limited v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings,WIPO Case No. D2017-1072 and Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493, holding that “[…] non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights.”). Accordingly, based on the available record as set out above and Policy, the Panel finds that Complainant has made out a prima facie case, which has not been rebutted by Respondent, and that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith Respondent registered the Disputed Domain Name in bad faith by doing so with knowledge of Complainant’s rights in their mark. It is not credible that Respondent was unaware of Complainant’s activities and the existence of Complainant’s mark when it acquired the Disputed Domain Name that incorporates Complainant’s mark (see WIPO Overview 3.0, section 3.2.2). As Complainant has submitted, Internet searches for both their mark and the Disputed Domain Name did or would have drawn Respondent’s attention to Complainant’s mark. It is also clear that Respondent was or should have been aware of Complainant’s business given the fame of Complainant’s marks. Section 3.1.4 of the WIPO Overview 3.0 states: “[…] 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.” The Panel finds that this principle is applicable here. In addition, the registration of a domain name that is identical or confusingly similar to a trademark by an entity that has no relation to that mark may be suggestive of bad faith (see Price Costco International, Inc. v. Truong Do Thanh Nhan,WIPO Case No. D2020-0936; Ebay Inc. v. Wangming, WIPO Case No. D2006‑1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163). A finding of bad faith is supported in this case by the fact that “the disputed domain name incorporates the Complainant’s well-known trademark” and that “there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name” (see Jazzercise, Inc. v. Fundacion Privacy Services LTD,WIPO Case No. D2020-1133). Given especially the fame of Complainant, it would have been expected that if Respondent had a legitimate reason for registering the Disputed Domain Name which did not trade on Complainant’s reputation and goodwill, it would have done so; it has not, and the Panel draws an adverse inference from that fact. Consequently, the Panel finds that the Disputed Domain Name was registered and is being used 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 Haig Oghigian
- Japanese trademark registration MICHELIN No. 5809207, filed on March 13, 2015, registered on November 27, 2015 and covering goods and services in classes 8, 11, 16, 20, 21, 24, and 26.
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Sole Panelist
Date: February 12, 2021
Full & Egal Universal Law Academy