The Complainants are Artic Investments S.A., Luxembourg, and Camso Deutschland GmbH, Germany, represented by Dreyfus & associés, France.
The Respondent is Kristini Anton, Kristini Anton, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2020. On December 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 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 the Complainants on December 3, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on December 7, 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 December 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2021. The Center appointed Cherise Valles as the sole panelist in this matter on January 20, 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 owner of the trademark CAMSO in this Complaint is Artic Investments S.A, located in Luxembourg (the “First Complainant”). As the owner of the trademark and the licensor, it signed a trademark license agreement on July 3, 2015 with several companies as licensees, granting them “a non-exclusive, non-transferable, worldwide license to use the Marks in connection with the production of Licensee’s products and/or services and/or the promotion thereof”. One of those companies is Camso Deutschland GmbH, located in Germany (the “Second Complainant”). The Second Complainant is a customer-focused, world-class manufacturer and service supplier of high-performance products that meet the mobility needs of the off-the-road vehicle market. The Second Complainant serves the material handling, construction, agriculture and powersport industries by manufacturing and distributing pneumatic, airless and solid tires, tracks, driven and trailed conversion track systems and OEM undercarriages. The Second Complainant has more than 7,500 dedicated employees spread over 26 countries around the world, with close to 200 people working in R&D, including a dedicated “advanced technology” group. It operates three advanced R&D centres and have 22 manufacturing plants in 10 countries through North and South America, Europe, and Asia. Both Complainants are subsidiaries of the parent company, Compagnie Générale des Etablissements Michelin (“Michelin”). Michelin is 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 Group has a Technology Center in charge of research, development and process engineering, with operations in Europe, North America, and Asia. Since 1889, Michelin has innovated constantly to facilitate the mobility of people and goods, thus contributing to the advancement of human progress. Today, the Group is a 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 one of the top-selling tire brands worldwide. The Complainants own the trademark CAMSO. In particular, the First Complainant is the owner of the several CAMSO Trademark Registrations as listed in Annex 4 of the Complaint: - United States trademark CAMSO No. 86288220/4869139, filed on May 21, 2014, registered on December 15, 2015 and covering goods and services in classes 7, 12, 35, 39, 40, and 42. The disputed domain name Before starting the present proceeding, the Complainants attempted to resolve this matter. The Complainants sent a blocking request of the domain name An initial question arises as to whether a trademark owner’s affiliate or licensee has standing to file a UDRP complaint. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states at section 1.4.1: “A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.” In the present case, the First Complainant is the owner of the trademark, and the Second Complainant is the licensee of the trademark. The Second Complainant is bringing this Complaint with the authorization of the trademark owner. Thus, both parties have standing to file this Complaint. The Complainants assert that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainants assert that: The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. - The disputed domain name is confusingly similar to the Complainants’ registered CAMSO trademarks, in light of the fact that it wholly incorporates the Complainants’ mark. The Respondent lacks rights or legitimate interests in the disputed domain name. - The Complainants state that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainants have never licensed or otherwise permitted the Respondent to use their trademarks or to register any domain name that included their trademarks. The disputed domain name has been registered and is being used in bad faith. - The Complainants assert that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Respondent’s fraudulent use of the disputed domain name is clear evidence of bad faith. The Complainants request the Panel to issue a decision finding that the disputed domain name be transferred to the First Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements: (i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name was registered and is being used in bad faith. The Complainants have the burden of proof in establishing each of these elements. The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainants. A. Identical or Confusingly Similar To prove this element, a complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the complainant’s trademark. The Complainants submit that the disputed domain name is confusingly similar to the trademark in which they have rights. The disputed domain name incorporates the CAMSO trademark in its entirety with the addition of the letter “c” intersected by a hyphen. Given the Complainants’ trademark registration as detailed above, the Complainants have established their trademark rights in CAMSO for the purposes of paragraph 4(a)(i) of the Policy. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Complainants’ trademark CAMSO is clearly recognizable in the disputed domain name. It is well established in previous UDRP decisions that, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as a letter of a hyphen, would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0 and Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768. It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the extension into account. See WIPO Overview 3.0 at section 1.11.1, which states that the “applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test”. In the light of the foregoing, the Panel finds that the disputed domain name Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent): “[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or 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; or (ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Previous UDRP panels have held that the complainant must establish a prima facie case that respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to respondent. See The American Automobile Association, Inc. v. PrivacyProtect.org/Domain Tech Enterprises, et al.,WIPO Case No. D2011-2202, noting that a complainant need only show a prima facie case that respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The Respondent is not commonly known by the disputed domain name or the name “camso”. The Complainants submit that there has never been any relationship between the Complainants and the Respondent. The Respondent is not affiliated with, licensed by, or otherwise authorized, be it directly or indirectly, to register or use the Complainants’ CAMSO trademarks in any manner whatsoever, including in, or as part of, the disputed domain name. The Complainants assert that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot claim prior rights in the disputed domain name as the CAMSO trademark precedes the registration of the disputed domain name by many years. The Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. In light of the foregoing, the Panel finds that the Complainants have established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has registered the domain name 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; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a complainant’s mark”. See WIPO Overview 3.0, section 3.1. The Complainants assert that the disputed domain name was registered and was being used in bad faith. Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. Previous UDRP panels have 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. UDRP panels have held that the “registration of a well-known trademark as a domain name is a clear indication of bad faith itself”. See The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113. The Complainants submit that the Respondent used the disputed domain name to commit fraud via a phishing scheme. The email server configured on the disputed domain name was used to send fraudulent emails in a phishing attempt that aimed to divert the Second Complainant’s client payments to a fake bank account. The fraudulent email was sent through an email address to impersonate one of the Second Complainant’s employees who currently uses a similar email address. Bad faith can be found where a respondent “knew or should have known” of the complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interest (Research In MotionLimited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009‑0320). The Complainants’ CAMSO trademark registrations significantly predate the registration date of the disputed domain name. It is highly unlikely that the Respondent was unaware of the Complainants when it registered the disputed domain name. 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 the Complainants and their trademark, it is hard to believe that Respondent was unaware of the existence of Complainants and trademarks at the time of registration of the disputed domain name. The fact that the disputed domain name entirely reproduces the Complainants’ trademark CAMSO confirms that the Respondent was aware of the Complainants’ trademarks and that it registered the disputed domain name nevertheless. Previous UDRP panels have established that knowledge of a complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name prove bad faith registration – see Alstom v. DomainInvestments LLC, WIPO Case No. D2008-0287. The Complainants submit that the Respondent is using the disputed domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy. Accordingly, the Panel concludes that the Complainants have satisfied their burden of showing bad faith registration and use of the disputed domain name 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 disputed domain name Cherise Valles
- United States trademark CAMSO No. 86288220/4869139, filed on May 23, 2014, registered on December 8, 2015 and covering goods and services in classes 7, 12, 35, 39, 40, and 42; and
- United States trademark CAMSO No 86291072/4865303, filed in May 23, 2014, registered in November 17, 2015 and covering goods in class 12.
The use of the disputed domain name also demonstrates the Respondent’s intention to benefit from the Complainants’ reputation and particularly from the latter’s trademark CAMSO to obtain commercial gain. This is considered as use in bad faith.
Sole Panelist
Date: February 10, 2021
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