The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (or “U.S.”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 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 29, 2020. On December 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 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 Complainant on January 4, 2021, 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 January 6, 2021. 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 January 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2021. The Center appointed Anne Gundelfinger as the sole panelist in this matter on February 2, 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 Founded in 1889, the Complainant Compagnie Générale des Etablissements Michelin is a French multinational tire company and is the top-selling tire manufacturer in the world. The Complainant has used the MICHELIN Mark around the world in connection with a wide range of tire and automotive-related products, as well as travel-related products, services, and merchandise. The Complainant operates 69 tire manufacturing facilities around the world, employs 114,000 people, and sells in 171 countries worldwide under the MICHELIN Mark. It also operates websites at “www.michelin.com” and “www.michelin.us” and owns the associated domain names. In addition to making and selling tires and automotive goods, the Complainant offers a range of services and solutions under the Mark, including digital services, maps and guides to help enrich trips and travels and make them unique experiences. In particular, the Complainant is widely known for its MICHELIN Guide, which was launched in 1920 to help motorists plan their trips and which has evolved into one of the most relied upon travel guides for top restaurants and hotels around the world. Since 2001, the Complainant has developed a range of MICHELIN-branded digital services, websites, and apps providing a range of travel services. The Complainant owns (among many others) the following trademark registrations: - European Union trademark “MICHELIN” No. 013558366, registered on April 17, 2015, covering goods and services in International Classes 9, 35, 38, 39, 41, and 42; The disputed domain name Most recently, when the Panel visited the website under the disputed domain name, the website generated an apparently fraudulent security warning allegedly from Microsoft instructing the user to call Microsoft at a given number. When the Panel called the number, she reached a “support representative” who then led her to a non-Microsoft website to download software that would allow the alleged Microsoft representative to access the Panel’s computer directly to “repair the security breach”. The Panel declined to do so and ended the call. The Complainant sent a demand letter to the Respondent about a month after registration of the disputed domain name, followed up by several reminders. The Complainant received no response from the Respondent to any of this correspondence. 5. Parties’ Contentions A. Complainant The Complainant contends that its MICHELIN Mark is well known and has been recognized as such by numerous prior UDRP panels. The Complainant further contends that the disputed domain name is confusingly similar to its MICHELIN Mark because the disputed domain name wholly encompasses the Mark and includes only the additional common English term “rewards”. The Complainant then argues that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. Specifically, the Complainant asserts inter alia that (a) the Complainant has given no authorization for use of the disputed domain name, (b) the Respondent is not commonly known by the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods or services, (c) there is no plausible set of circumstances in which the Respondent could make a legitimate use of the disputed domain name, (d) the Complainant’s Mark is extremely well-known globally and the Respondent must have therefore known of and targeted the Mark in registering the disputed domain name, (e) the Respondent’s use of the disputed domain name for a website that variously displays PPC links and ecommerce activity is misleading and creates a likelihood of confusion as to the source or sponsorship of the Respondent’s website, and (f) the Respondent used a privacy service to shield its identity and failed to respond to multiple demand letters, all of which is further evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements to be successful in this action: (i) the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; (ii) the 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. A. Identical or Confusingly Similar The disputed domain name wholly incorporates the Complainant’s MICHELIN Mark along with the term “rewards”. It is well-established that the addition of other terms (whether generic, descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity between a domain name and that mark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. See also, Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287. Similarly, the addition of the generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark under the requirements of the Policy, and that the first element of the test is satisfied. B. Rights or Legitimate Interests It is well-established that a complainant must present a prima facie case in relation to the second element of the test, not mere allegations. Once a prima facie showing is made, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. This burden‑shifting is appropriate given that the respondent is often the only party with access to evidence of its own rights or legitimate interests. Accordingly, where a respondent fails to file a response, a UDRP panel may draw inferences from the failure to respond as appropriate under the circumstances of the case and while still weighing all available evidence irrespective of whether a response is filed. See, section 2.1 of the WIPO Overview 3.0 and cases cited therein. See also, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here the Complainant has averred that there is no relationship between it and the Respondent, and that it did not authorize the Respondent’s use of the disputed domain name. The Complainant further argues that the Respondent is not commonly known by the disputed domain name and is not using it in connection with a bona fide offering of goods and services, nor is there any plausible legitimate use the Respondent could make given that the MICHELIN Mark is so well known. In the absence of any response or countervailing evidence from the Respondent, combined with the global fame of the Complainant’s MICHELIN Mark and the evidence of bad faith (both discussed below), the Panel accepts the Complainant’s arguments. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name and that the Respondent has not rebutted that prima facie showing. The Panel therefore concludes that the Complainant has met its burden under the second element of the test. C. Registered and Used in Bad Faith The third element of the test requires a showing that the disputed domain name has been registered and used in bad faith. The Complainant has asserted that its MICHELIN Mark is globally well known or “famous” and submitted evidence of its long and wide-ranging use. Many prior UDRP panels have concurred with this contention, and this Panel agrees. See, 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; Compagnie Générale des Etablissements Michelin v. Cameron David Jackson,WIPO Case No. D2015-1671. Accordingly, given the global fame and distinctive nature of the MICHELIN Mark, as well as the use of the term “rewards”, there can be little doubt that the Respondent knew of and was targeting the Complainant’s MICHELIN Mark. Such targeting of a very well known mark is alone sufficient to establish bad faith registration and use. See, section 3.1.4 of the WIPO Overview 3.0 and cases cited therein; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; LEGO Juris A/S v. store24hour,WIPO Case No. D2013-0091. Moreover, the various and ever-changing contents of the website under the disputed domain name suggests that the Respondent is not seeking ways to run a legitimate business but rather is seeking to leverage the Complainant’s well-known MICHELIN Mark for its own financial gain and/or nefarious fraudulent purposes. Indeed, the Panel’s recent visit to the Respondent’s website clearly indicated that the disputed domain name was being used for some sort of phishing or other fraudulent scheme pursuant to which the Respondent would gain access to the site visitor’s computer. Such fraudulent activity clearly establishes bad faith use. See, section 3.4 of the WIPO Overview 3.0 and cases cited therein; Facebook, Inc. v. WhoisGuard, Inc. / Donna E. Fleming, Mansmann’s Department Store,WIPO Case No. D2019-1777. Finally, in these circumstances, both the Respondent’s use of a privacy protection service and its failure to respond to this proceeding and the multiple demand letters from the Complainant raise an inference of, and further support a finding of, bad faith registration and use. See, section 3.6 of the WIPO Overview 3.0 and cases cited therein. Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and that the third element of the test is satisfied. 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 Anne Gundelfinger
- International trademark “MICHELIN” No. 771031, registered on June 11, 2001, and duly renewed, designating many major markets around the world and covering goods and services in International Classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, and 42; and
- U.S. trademark “MICHELIN” No. 77977654, registered on September 15, 2009, and duly renewed, covering goods and services in International Classes 3, 5, 7, 8, 9, 11, 12, 16, 17, 20, 21 24, 25, 27, and 28.
Sole Panelist
Date: February 16, 2021
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