The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Song Lan, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2021. On March 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 29, 2021, 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 March 29, 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 March 30, 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 April 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2021. The Center appointed Warwick Smith as the sole panelist in this matter on April 30, 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 Complainant is a corporation based in France. It is one of the world’s leading suppliers of tyres, which it markets under the MICHELIN brand. In addition, it markets a range of “Michelin” maps and guides, including the Michelin Guide (“the Guide”), which was introduced in 1920. From 1926, the Guide began to award stars to fine dining establishments, and from about that time the Guide also provided a list of hotels in Paris, and lists of restaurants according to specific categories. Over the years since the 1920s, the Guide has become famous around the world. The Complainant operates in 171 countries, and it employs over 114,000 people in those countries. It operates 69 tyre manufacturing plants, and it has sales agencies in 17 countries. The Complainant has developed a variety of digital services, including the Michelin Restaurant website (established in 2012), and a range of six Michelin Mobility Apps (released in 2013) designed to meet travelers’ needs. The Complainant is the owner of numerous MICHELIN trade marks around the world, including the following: Jurisdiction Mark Mark Number Registration Date China MICHELIN in respect of goods in Class 12 6167649 July 16, 2017 China MICHELIN in respect of goods in Class 16 10574991 March 6, 2012 China MICHELIN in respect of services in Class 35 9156074 February 28, 2011 International registration designating China (and other countries) MICHELIN in respect of goods and services in Classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, and 42 771031 June 11, 2001 The Complainant also uses a number of domain names to promote its goods and services, including The Domain Name was registered on December 31, 2020. The Complainant says that it has randomly resolved to fraudulent websites since then, and that it also redirects to a parking page displaying commercial links of various content, mostly relating to credit cards and car insurance. The only evidence produced of the so-called “fraudulent websites”, was a screenshot of a French language webpage or pages concerned with the general topic of intestinal health. The website referred to the work of a named nutritionist, and it appeared to offer or recommend at least one remedy which the site visitor was invited to try. An email server has been configured at the Domain Name, but the Complainant says the Domain Name has not been used in any legitimate business, or to provide any legitimate service. The Complainant contends that the existence of the email server creates a risk that the Respondent might be engaged in a phishing scheme, aimed at stealing valuable information such as credit card details from the Complainant’s clients or employees. The Respondent, Song Lan, is also a named respondent in another proceeding commenced under the Policy, Vente-Privee.Com v. Super Privacy Service Ltd c/o Dynadot / song lan,WIPO Case No. D2021-0279. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name imitates the Complainant’s MICHELIN marks, and is confusingly similar to them. The Domain Name deliberately misspells the MICHELIN mark by replacing the last letter of the mark “n” with a “b”. As “n” and “b” are next to each other on both AZERTY and QWERTY keyboards, the chances of typing errors occurring is increased. There is a likelihood of Internet users being confused into believing that any website at the Domain Name will be that of the Complainant. The Respondent has thus engaged in the practice commonly known as “typosquatting”. UDRP panels have consistently held that a domain name which consists of a common, obvious or intentional misspelling of a trade mark is considered to be confusingly similar to the relevant mark.1 The generic Top-Level Domain (“gTLD”) “.com” is generally not taken into account by panels considering the question of confusing similarity under paragraph 4(a)(i) of the Policy. Next, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. There is no evidence that he is commonly known by the Domain Name, and the Complainant has not authorized him to use any expression that is confusingly similar to its MICHELIN mark, whether in a domain name or otherwise. In such circumstances, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed. Pointing the Domain Name to fraudulent websites and/or to a parking page, does not constitute a bona fide offering of goods or services. Nor could any intended phishing scheme be a bona fide or legitimate use of the Domain Name. Finally, the Complainant contends that the Domain Name was registered and has been used in bad faith. As for bad faith in the registration of the Domain Name, the Complainant contends that it is implausible that the Respondent was unaware of the Domain Name when he registered the Domain Name. But even in the unlikely event that the Respondent was unaware of the Complainant, a quick trade mark or Google search would have revealed to the Respondent the existence of the Complainant and its famous mark. And the Respondent was obliged by the Policy to make enquiries of that sort.2 The Domain Name was clearly intended to imitate the Complainant’s MICHELIN mark. The Respondent’s use of a privacy shield service when he registered the Domain Name, designed to hide his identity and contact details, is a further indicator of bad faith registration of the Domain Name. The circumstances, including the worldwide fame of the MICHELIN mark and the obvious exercise in typosquatting by the Respondent, justify an inference of opportunistic bad faith on his part. As for bad faith use of the Domain Name, the Complainant contends that the circumstances fall within the example of bad faith use provided at paragraph 4(b)(iv) of the Policy (using a disputed domain name to intentionally attract Internet users to the registrant’s website or online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of registrant’s website or online location, or of any product or service offered thereon). Also, randomly directing a disputed domain name to fraudulent webpages and/or to a parking page, has been regarded by numerous UDRP panels as additional proof of bad faith, and previous panels have found that typosquatting alone may be sufficient to establish bad faith registration and use. In this case, it is more likely than not that the Respondent’s primary motive in registering and using the Domain Name was to capitalize on or otherwise take advantage of the Complainant’s trade mark rights, through the creation of initial interest confusion. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, a complainant is required to establish each of the following: (i) the domain name is identical or confusingly similar to a trade mark or service mark 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has proved this part of the Complaint. It is the owner of the registered mark MICHELIN in numerous jurisdictions, and thus has “rights” in that mark for the purposes of paragraph 4(a)(i) of the Policy. And there is no doubt that the Domain Name is both phonetically and visually similar to the MICHELIN mark. The gTLD “.com” need not be considered in the comparison required by paragraph 4(a)(i), and the Domain Name differs from the mark only in the last letter, where the “n” in “michelin” has been replaced with a “b”. As those letters are side-by-side on both QWERTY and AZERTY keyboards, and no explanation for his choice of the Domain Name has been provided by the Respondent, an inference of typosquatting by the Respondent is not difficult to draw. Here, the Domain Name contains sufficiently recognisable aspects of the MICHELIN mark that Internet users would be likely to either miss the misspelling of the MICHELIN mark in the Domain Name altogether, or assume that the Domain Name must be associated in some way with the Complainant. That is sufficient to establish confusing similarity under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy set out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy. The circumstances are: (i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly direct consumers or to tarnish the trade mark or service mark at issue. WIPO Overview 3.0, section 2.1, states the following on the burden of proof under paragraph 4(a)(ii) of the Policy: “While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” In this case, there is nothing to suggest that the Respondent (or any entity associated with him) has been commonly known by the Domain Name, and the Complainant has not licensed or authorized him to use the Domain Name. Accordingly, there appears to be no possible claim to a right or legitimate interest under paragraph 4 (c)(ii) of the Policy. Nor is there any evidence of the Respondent having used (or made demonstrable preparations to use) the Domain Name, or any name corresponding to it, in connection with any bona fide offering of goods or services. The linking of a disputed domain name to a parking page containing click-through links to third party websites, is not a bona fide offering of goods or services, at least where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark, or otherwise misleads Internet users. 3 In this case, the MICHELIN mark is famous around the world, not only for tyres but also for guides and for other travel-related goods and services, and a number of the links on the parking page to which the Domain Name has resolved (including “Car insurance”, and “Credit cards”) are apt to suggest some association with the travel-related services offered by the Complainant under its MICHELIN mark. This is not a case of a domain name consisting of a dictionary word being pointed to a parking page with pay-per-click links to third party websites having some connection to that word – “Michelin” is not a dictionary word, and the only sensible inference on the evidence is that the Respondent chose the Domain Name in order to attract to the Respondent’s website Internet users wanting to visit the Complainant’s website, thereby trading on the Complainant’s substantial goodwill in its MICHELIN mark. That could not be a bona fide offering of goods or services by the Respondent. The link to the webpages described by the Complainant as “fraudulent” is equally incapable of meeting the “bona fide offering of goods or services” test in paragraph 4(c)(i). The link is to a French language website concerned with the general topic of intestinal health. It refers to the work of a named nutritionist, and it appears to suggest at least one remedy. But the Panel could see no possible linkage between this material and the expression “michelib”. The absence of such linkage, and the use of the French language, reinforce the impression that the Respondent’s intention in registering the Domain Name was to attract Internet users familiar with the Complainant to the Respondent’s website, in the hope that at least some of them would be diverted to the (unrelated) content of the Respondent’s website. This (apparently deliberate) creation of “initial interest confusion” is not a use of a domain name in connection with a bona fide offering of goods or services. On the face of it, then, the Respondent could not have any right or legitimate interest in respect of the Domain Name under paragraph 4(c)(i) of the Policy. Nor, on the evidence produced, could the Respondent’s use of the Domain Name support a claim to rights or interests based on a legitimate noncommercial, or fair, use of the Domain Name under paragraph 4(c)(iii) of the Policy. Deliberate, unauthorized use of a word in a domain name clearly intended to be mistaken for a trade mark owner’s mark for commercial gain could not amount to a fair use of a disputed domain name, or to a legitimate noncommercial use. There does not appear to be any arguable right or legitimate interest under paragraph 4(c)(iii) of the Policy. For those reasons the Panel is satisfied that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy, sufficient to move the onus of showing that some right or legitimate interest exists to the Respondent. In the absence of a response, that onus has not been discharged, and the Complainant’s prima facie proof remains unrebutted. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy, the following circumstances, without limitation, are deemed (if found by the Panel to be present) to be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the holder has 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or (ii) the holder has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or (iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location. The Panel accepts that the Complainant has also proved this element of the Complaint. The Domain Name is confusingly similar to the Complainant’s MICHELIN mark, and the Panel has found that the Respondent has no rights or legitimate interests in respect of the Domain Name. Furthermore, the Panel accepts the Complainant’s submission that the distinctiveness and widespread use of its MICHELIN mark was such that the Respondent must have been aware of the MICHELIN mark when he registered the Domain Name. In the absence of any response, the choice of a domain name that differed from that mark by only one letter, and was confusingly similar to the mark both visually and phonetically, effectively confirms that the Respondent was aware of the Complainant’s mark, and intended to use the Domain Name to trade off the Complainant’s very substantial reputation in its mark. The Panel makes a finding accordingly. In the absence of any response, the Panel has no difficulty concluding that the circumstances fall squarely within paragraph 4(b)(iv) of the Policy. The Respondent has sought to attract Internet users to the Respondent’s website by registering a domain name that was designed to imitate the Complainant’s mark, and in so doing he improperly sought to take advantage of the Complainant’s goodwill in its mark. The consensus view of UDRP panels is that a respondent cannot disclaim responsibility for third party links on a parking page to which the disputed domain name has resolved, even if those links were “automatically” generated (for example, by the registrar).4 Nor does it matter that the respondent itself may not have directly profited from the links to third party websites – the respondent will still be responsible for the third party links unless it can show that it has made some good faith attempt towards preventing inclusion of advertising or links which profit from a third party’s trade mark. It is normally enough for a complainant to show that profit, or “commercial gain”, was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant.5 In this case, the Panel infers that the links to third party websites have been provided for commercial gain, and there is no evidence of any good faith attempts by the Respondent towards preventing inclusion of advertising or links which might have a connection or association with the Complainant and its MICHELIN mark. The screenshot of the French language website to which the Domain Name has resolved appears to offer at least one remedy, which the site visitor was invited to “try this evening”, so it appears that this website was also commercial in nature. The element of using the Domain Name to misleadingly attract visitors to the Respondent’s website, coupled with the commercial gain factor, is also sufficient to bring this use of the Domain Name within paragraph 4(b)(iv) of the Policy. The circumstances accordingly establish bad faith use under paragraph 4(b)(iv) of the Policy. There is no basis to conclude that the Respondent’s purpose in registering the Domain Name was anything other than the bad faith purpose for which the Domain Name was used not long after it was registered. The Respondent’s very choice of a word so close to the Complainant’s famous MICHELIN mark as the dominant part of the Domain Name, considered with the uses being made of the Respondent’s website at the time the Complaint was filed, make it clear that the Respondent was targeting the Complainant and its MICHELIN marks when he registered the Domain Name. The Panel therefore finds that the Domain Name has been registered and is being used in bad faith for the purposes of 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 Warwick Smith 1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9. The conclusion of confusing similarity in these circumstances normally stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. The substitution of an adjacent keyboard letter for a letter in a complainant’s mark in a disputed domain name is expressly mentioned in WIPO Overview 3.0 as an example of typosquatting. 2 Referring to paragraph 2 of the Policy, under which a person registering a domain name 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. 3 WIPO Overview 3.0, section 2.9. 4 WIPO Overview 3.0, at section 3.5. 5 SAP SE v. Domains by Proxy, LLC / Kamal Karmakar,WIPO Case No. D2016-2497.
Sole Panelist
Date: May 14, 2021
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