The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Motorbanden Quick Service, Netherlands. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the Respondent of the Complaint, and the proceedings commenced on July 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. The Respondent’s communication was received by the Center on August 2, 2021. The Respondent was granted the automatic 4 calendar days extension for response under paragraph 5(b) of the Rules. The due date for Response was extended to August 7, 2021. The Center notified Parties the Commencement of Panel Appointment Process on August 10, 2021. The Center appointed Luca Barbero as the sole panelist in this matter on August 13, 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 leading tire company established in 1889 and headquartered in Clermont-Ferrand, France. The Complainant is present in 171 countries, has more than 114,000 employees and operates 69 tire manufacturing facilities and sales agencies in 17 countries. The Complainant is the owner of several trademark registrations for MICHELIN, including the following, as per trademark certificates submitted as Annex 4 to the Complaint: - European Union Trademark Registration No. 001791243 for MICHELIN (word mark), filed on August 3, 2000 and registered on October 24, 2001, in international classes 6, 7, 12, 17, and 28; The Complainant is also the owner, amongst others, of the domain names The disputed domain name The Complainant contends that the disputed domain name is confusingly similar to its trademark MICHELIN as it reproduces the trademark MICHELIN in its entirety with the mere addition of the term “motorbanden” (i.e.: “motorcycle tires” in Dutch) which is insufficient to exclude confusing similarity. The extension “.com” is not to be taken into consideration when examining the identity or similarity between a Complainant’s trademark and the disputed domain name as it is merely a technical requirement to register domain names. Moreover, the Complainant underlines that the term “motorbanden” only serves to enhance the false impression that the disputed domain name is somehow officially related to the Complainant since the term relates to the Complainant’s field of activity. With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not commonly known by the disputed domain name nor by the trademark MICHELIN. The Complainant states that the Respondent is an authorized dealer of the Complainant but that it has never granted any permission to the Respondent to register the trademark MICHELIN nor to seek registration of any domain name incorporating said trademark. The Complainant also highlights that, for the Respondent to be seen as making a bona fide offering of goods or services, it should have been at least selling the Complainant’s goods or services via the website at the disputed domain name, whilst instead, the Respondent appears to have registered for several years the disputed domain name without using it. In addition, the Complainant emphasizes that the disputed domain name associates the Complainant’s trademark MICHELIN specifically with the term “motorbanden”, which is further evidence of the fact that the Respondent wishes to give an overall impression that the disputed domain name is somewhat endorsed by the Complainant, which is not and cannot constitute fair use especially considering the disputed domain name is not being used in a way that may properly disclose the relationship between the Complainant and the Respondent. With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering its well-known trademark and reputation worldwide, it is highly unlikely that the Respondent could have been unaware of the Complainant when registering the disputed domain name. The Complainant emphasizes that the disputed domain name entirely reproduces the Complainant’s trademark MICHELIN associating it with the term “motorbanden” (meaning “motorcycle tires” in Dutch) and highlights that, where an obvious connection with a well-known trademark is implied by someone who is not connected to that trademark, there is a clear suggestion of bad faith registration. The Complainant underlines that its MICHELIN trademark registrations significantly predate the registration of the disputed domain name and that knowledge of the Complainant’s rights at the time of registering the disputed domain name, also constitutes bad faith registration, especially where a simple online search would have undoubtedly revealed the existence of the Complainant and its trademarks. The Complainant also informs the Panel that, upon discovering the disputed domain name, it attempted to settle the matter by sending a cease and desist letter, to which the Respondent did not reply, if not after a series of reminders, which prompted the reply of the Respondent’s counsel. In its response, the Respondent’s counsel asserted that the Respondent is a Complainant’s authorized reseller, that the disputed domain name was intended to provide information about the Michelin goods and that the Respondent would have rights in the disputed domain name since its company name encompasses the expression “motorbanden”, reproduced in the disputed domain name. The Respondent thus refused to transfer the disputed domain name free of charge to the Complainant, claiming it would use the same, for an information website on Michelin goods. In this respect, the Complainant notes that both the disputed domain name and a second domain name Consequently, the Complainant states that the Respondent failed to explain why it would need two domain names for its project and why it would specifically need to incorporate the mark MICHELIN in its registered domain names, considering information on the Complainant’s goods could be easily provided through a domain name simply featuring the Respondent’s corporate name. The Complainant concludes that the Respondent, by no longer answering the Complainant’s emails, has failed to solve the situation amicably and in doing so has prevented the Complainant from reflecting its trademark in domain names that could be suitable for its activity in Benelux. B. Respondent As highlighted in the Procedural History, the Respondent’s counsel sent an informal communication to the Center, on August 2, 2021, requesting an extension of the due date for Response. The Center answered, on the same day, granting the automatic 4 calendar day extension for response under paragraph 5(b) of the Rules. However, no Response was submitted within the extended deadline for the filing of a Response. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; The Panel finds that the Complainant has established rights over the trademark MICHELIN based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex 4 to the Complaint. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity 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. In addition, as stated in section 1.8 of the WIPO Overview 3.0, where 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. Moreover, as indicated in section 1.11.1 of the WIPO Overview 3.0, the applicable Top Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The Panel finds that the disputed domain name is confusingly similar to the trademark MICHELIN as it reproduces the trademark in its entirety with the mere addition of the term “motorbanden” (meaning “motorcycle tires” in Dutch) and the TLD “.com”, which do not prevent a finding of confusing similarity. Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(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 non-commercial 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.” In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (see Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269). The Panel notes that the Respondent is an authorized dealer of the Complainant in the Netherlands but, according to the Complainant’s allegations, which have not been contested by the Respondent, has not obtained any authorization to use the Complainant’s trademarks or to register and use the disputed domain name. In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name and the fact that the Respondent’s name includes the term “motorbanden” is certainly not sufficient to substantiate the Respondent’s claim for legitimate interests (as held in the Respondent’s reply to the Complainant’s cease and desist letter submitted as Annex 6 to the Complaint) since the distinctive part of the disputed domain name is constituted by the trademark MICHELIN. As highlighted above, the disputed domain name has been pointed to a parking page of a hosting provider. Moreover, there is no element on the records from which the Panel could infer the Respondent’s intention to use the disputed domain name in connection with a bona fide offering of goods of services. In addition, in view of the Respondent’s default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483, where the panel found that, absent some contrary evidence from respondent, passive holding of a domain name does not constitute legitimate noncommercial or fair use. Furthermore, the Panel finds that the disputed domain name, combining the Complainant’s well-known trademark MICHELIN with a term referable to the Complainant’s products, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), 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”. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith: (i) circumstances indicating that the Respondent 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 trademark 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 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; or (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 the Respondentwebsite 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. As to the bad faith at the time of the registration, the Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark MICHELIN in connection with the Complainant’s products worldwide, including in the Respondent’s country; ii) the well-known character of the trademark; and iii) the confusing similarity of the disputed domain name with the Complainant’s trademark, entirely reproduced in the disputed domain name in combination with a term “motorbaden” (meaning “motorcycle tires” in Dutch), which is descriptive of products commercialized under the trademark MICHELIN, the Respondent very likely registered the disputed domain name having the Complainant’s trademark in mind. Furthermore, since the Complainant’s trademark is well-known, the Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks: e.g. Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O’Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050; and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003 0103. As to the use of the disputed domain name, the Panel notes that, as highlighted above, it does not resolve to a dedicated website, but to a hosting provider’s default page. According to section 3.3 of the WIPO Overview 3.0, “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”. In the case at hand, in view of i) the Respondent’s registration of a domain name highly confusingly similar to the Complainant’s prior registered and well-known trademark; ii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; and iii) the Respondent’s failure to respond to the Complainant’s contentions, the Panel finds that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and15of the Rules, the Panel orders that the disputed domain name, Luca Barbero
- European Union Trademark Registration No. 007333834 for MICHELIN (word mark), filed on October 13, 2008 and registered on May 14, 2009, in international classes 1, 8, 9, 11, 12, 16, 20, 21, and 28.
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: August 27, 2021
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