The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Ken Baca, KAC Properties, United States of America (“United States”).
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2021. On July 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 20, 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 August 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2021. The Response was filed with the Center on August 15, 2021. The Complainant’s Supplemental Filing was filed with the Center on August 20, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on September 9, 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 BackgroundFounded in 1889, the Complainant is a leading tire company, headquartered in France and present in 171 countries, with 114,000 employees and 69 manufacturing facilities. The Complainant owns the MICHELIN trademark, which is protected worldwide in connection with automobile and tire manufacturing industries, as well as hotel and restaurant guides, and maps. For example, the Complainant is the owner of United States Registered Trademark no. 3329924 for the word mark MICHELIN, registered on November 6, 2007, and covering services in class 39. The Complainant operates certain domain names reflecting its trademarks, including
The Respondent appears to operate a consultancy service in the United States named “Made American Strong”. The Respondent says that on February 10, 2021, the Respondent received a request for a call from one of the Complainant’s employees who was conducting informal benchmarking about employee transitions. The Respondent replied by email and a call was set up for February 12, 2021. During said call, the Respondent notes that it was engaged in a “brainstorming” exercise with the Complainant’s employee, in connection with which the Respondent suggested that the Complainant adopt the name “Made Michelin Strong” into a campaign style motto to be used in the Complainant’s “Michelin Manufacturing Scholars” program.
Following said call, on February 16, 2021, the Respondent registered the disputed domain names. The Respondent does not appear to have asked for, nor does the Complainant appear to have given, permission for said registrations to be made. The websites associated with the disputed domain names are free parking pages provided by the Registrar featuring pay-per-click advertising links focused on the Complainant’s line of business (for example, links to “Tires”, “Truck Tires”, and “Tyres”).
The Complainant’s representative wrote by email to the Respondent via the Registrar on April 25, 2021, with a reminder issued on May 5, 2021. In its said communication, the Complainant’s representative pointed out that the disputed domain names resolved to parking pages displaying various commercial links related to the Complainant’s field of activity and that, to the best of its knowledge, the Complainant had never granted the Respondent any authorization to use the MICHELIN trademark or to register the disputed domain names. The Complainant asserts, and the Respondent does not deny, that the Respondent did not reply to these communications.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows:
Identical or confusingly similar
The disputed domain names are confusingly similar to the Complainant’s MICHELIN trademark, which is reproduced in its entirety in each. Multiple previous panels under the Policy have considered said trademark to be well-known or famous. Said disputed domain names add the verb “made” and the adjective “strong” to the Complainant’s said mark, making a direct reference to the Complainant’s activity and services. Such additional terms do not modify the overall impression of the disputed domain names, which remain similar to the Complainant’s trademark. The generic Top-Level Domains (“gTLDs”) of the disputed domain names are not taken into consideration when examining identity or confusing similarity.
Rights or legitimate interest
The Respondent is neither affiliated with nor authorized by the Complainant to use and register its mark or to register a corresponding domain name. The Respondent has no prior rights or legitimate interests in the disputed domain names, which were long preceded by the registration of the Complainant’s MICHELIN trademark. The Respondent is not commonly known by the disputed domain names or by the name “Michelin”. The Respondent cannot assert that it is making demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Respondent has not made a legitimate noncommercial or fair use of the disputed domain names, which resolve to a parking page displaying commercial links targeting the Complainant’s field of activity. Previous panels have found that in the absence of license or permission from the Complainant to use its widely-known trademark, no actual or contemplated bona fide or legitimate use could reasonably be claimed. The nature of the disputed domain names, combining the Complainant’s mark with “made” and “strong” do not suggest a legitimate noncommercial or fair use. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain names as this would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.
Registered and used in bad faith
The Respondent was not unaware of the Complainant when he registered the disputed domain names. The Complainant is well-known throughout the world, as acknowledged by previous panels under the Policy. The composition of the disputed domain names, which reproduce the Complainant’s trademark, demonstrate the Respondent’s awareness. Bad faith has been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the mark suggests opportunistic bad faith.
The Complainant’s trademark rights significantly predate the registration date of the disputed domain names. Previous panels have determined that knowledge of the Complainant’s intellectual property rights at the time of registration, including trademarks, proves bad faith registration. According to paragraph 2 of the Policy, it was the Respondent’s duty to verify that the registration of the disputed domain names did not infringe third party rights. A quick trademark search for MICHELIN would have revealed the Complainant’s rights to the Respondent, as would a simple Google search with a similar keyword. The worldwide and high level of notoriety of the Complainant transcends national borders. The Respondent could not have chosen the disputed domain names for any reason other than deliberately to cause confusion in order to capitalize on or otherwise take unfair advantage of the Complainant’s rights.
Previous panels have considered that in the absence of any license or permission of the Complainant to use such a widely known mark, no actual or contemplated bona fide or legitimate use of the disputed domain names could be claimed. A likelihood of confusion should be presumed which will result in the diversion of Internet traffic from the Complainant’s site to that of the Respondent. The Respondent was aware of the Complainant’s rights and used the disputed domain names to divert Internet users to a webpage displaying pay-per-click links, which link to the Complainant’s competitors. This evidences bad faith. The use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the Policy and there cannot be any actual or contemplated good faith use. Any use would result in misleading diversion and unfairly taking advantage of the Complainant’s rights. It is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain names as this would result in taking unfair advantage of the Complainant’s rights.
B. RespondentThe Respondent contends as follows:
The Complaint should be denied.
Identical or confusingly similar
The disputed domain names are not similar and not identical. They are more similar to the Respondent’s other domain names, 395 in number, registered over the years. 56 of these begin with or include the word “made”. 90 of these end with or include the word “strong”.
Rights and legitimate interests
The disputed domain names are legitimate and noncommercial, and should be considered fair use. There is no intent to mislead, divert or tarnish. Both the “made” and “strong” can positively impact the Complainant.
The Respondent had a discussion with one of the Complainant’s senior executives on February 12, 2021. During such discussion, the Respondent came up with the idea of incorporating the Michelin Manufacturing Scholars program and “Made Michelin Strong” into a campaign style motto as a theme for employees in such program and not a product for sale. The Respondent was engaged in providing a consultancy service and was also using part of its own trademark. The Respondent would be willing to continue consulting with the Complainant.
The Respondent is making nominative fair use of the Complainant’s mark. The principle of nominative fair use allows a person to make referential use of the trademark of another to describe such product or to compare it with their own product. This provides an affirmative defense to trademark infringement.
Registered and used in bad faith
The disputed domain names were not registered and are not being used in bad faith. They were not registered to prevent the owner of the trademark from reflecting the mark in a domain name. They were not registered to disrupt the business of a competitor. The Respondent has not intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent was originally responding to a request from one of the Complainant’s executives to brainstorm. The Respondent still believes that the term “Made Michelin Strong” would be a great name for the Complainant’s Michelin Manufacturing Scholars program.
6. Discussion and FindingsTo succeed in respect of each of the disputed domain names, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied in respect of the disputed domain name concerned:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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. Preliminary Issue – Complainant’s Supplemental FilingParagraph 12 of the Rules provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Unsolicited supplemental filings are generally discouraged unless specifically requested by the panel. Panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.
The Complainant has filed a supplemental filing in this case seeking to respond to certain matters raised in the Response. Having reviewed the Complaint and Response, the Panel considers that it does not require to admit the Complainant’s supplemental filing in order to determine the matter. Had such supplemental filing been admitted, it would have been necessary to provide the Respondent with a right of reply to the same, which would mean that the proceedings would have been unnecessarily protracted and would not take place with due expedition (see paragraph 10(c) of the Rules). Accordingly, the Panel declines to admit the Complainant’s supplemental filing.
B. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has UDRP-relevant rights in its MICHELIN registered trademark. The Respondent does not contest that particular issue. The Panel therefore turns to the assessment of identity or confusing similarity. In that assessment, panels under the Policy typically compare the trademark concerned to the second level of the domain name(s) under consideration in a relatively straightforward side-by-side analysis, disregarding the gTLDs on the grounds that these are required for technical reasons only. The principal purpose of such comparison exercise is to identify whether the trademark is recognizable in the domain name(s) concerned.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of the first element analysis (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Where the relevant trademark is recognizable within the disputed domain name(s), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not typically prevent a finding of confusing similarity under the first element assessment (see section 1.8 of the WIPO Overview 3.0).
In the present case, the second level of each of the disputed domain names is the same, consisting of the Complainant’s MICHELIN mark, reproduced in its entirety, prefixed with the word “made” and suffixed with the word “strong”. The Complainant’s mark is recognizable in each of the disputed domain names. The Respondent asserts that the disputed domain names are neither similar nor identical to the Complainant’s mark because they are more similar to the Respondent’s other domain names, many of which contain the words “made” and “strong”. As noted above, however, the fact that the disputed domain names contain these words along with the Complainant’s mark would not prevent a finding of confusing similarity on the first element assessment.
In these circumstances, the Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s trademark and therefore that the Complainant has carried its burden in connection with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in each of the disputed domain names:
“Any 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent is neither affiliated with nor authorized by the Complainant to use and register its mark or to register a corresponding domain name, has no prior rights or legitimate interest in the disputed domain names, is not commonly known by the disputed domain names or by the name “Michelin”, and has not made a legitimate noncommercial or fair use of the disputed domain names, which resolve to a parking page displaying commercial links targeting the Complainant’s field of activity. Accordingly, the burden of production shifts to the Respondent to bring forward evidence of its rights and legitimate interests in the disputed domain name.
The Respondent asserts that it is making legitimate noncommercial or fair use of the disputed domain names, effectively a case in terms of paragraph 4(c)(iii) of the Policy. The Respondent explains how it registered the disputed domain names following a “brainstorming” exercise with an employee of the Complainant during which the Respondent suggested that the terms “made” and “strong” could be used in a certain way by the Complainant in the course of its business. There is no suggestion in either of the Parties’ submissions that the Complainant at any point invited or otherwise gave permission to the Respondent to register the disputed domain names in furtherance of the initial discussion between the Parties. Accordingly, the Respondent cannot claim rights or legitimate interests in the disputed domain names on the basis of the Complainant’s consent to register domain names containing its MICHELIN trademark.
With regard to the Respondent’s assertion that it is making a noncommercial use of the disputed domain names, try as it might, the Panel cannot see how the Respondent’s registration of domain names in connection with an alleged business consulting exercise, whether in the context of a formal contractual arrangement or merely an informal “pre-sales” discussion with the Complainant, could be described in any way as noncommercial. The Respondent was engaging in commercial activities, apparently with intent for commercial gain and this is entirely bound up with its registration of the disputed domain names. “Commercial gain” in this context may include a respondent gaining or seeking reputational and/or bargaining advantage, even where such advantage may not be readily quantified (see section 2.5.3 of the WIPO Overview 3.0). The fact that the Respondent wishes to continue to provide services to the Complainant is highly relevant here as it is reasonable to infer from the facts of the case that the Respondent may have registered the disputed domain names in the hope or expectation of providing further consultancy services to the Complainant. In the absence of permission from the Complainant, this does not confer rights or legitimate interests upon the Respondent.
Furthermore, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner (see section 2.5 of the WIPO Overview 3.0). In this context, the Panel accepts the general thrust of the Complainant’s case that any conceivable use by the Respondent of the disputed domain names for any purpose is likely to carry a substantive risk of implied affiliation. It appears to the Panel that the Respondent apparently registered the disputed domain names in order for the Complainant (and not the Respondent) to use them in the course of its business, on the basis of the Respondent’s recommendation that the Complainant should adopt the “motto” “Made Michelin Strong”. It is not clear to the Panel for what purpose the Respondent is insisting that it is entitled to register or use the disputed domain names itself.
The Response goes on to assert that the Respondent is making nominative fair use of the Complainant’s mark. However, the Panel cannot see how this could be the case. The Respondent seems to suggest that it is making referential or comparative use of the Complainant’s mark. However, the Respondent’s registration and use of the disputed domain names does not accord with any such referential or comparative use. The Respondent is not, for example, a reseller of the Complainant’s goods or a repair service provider for such goods, whereby it needs to refer to those goods by way of the Complainant’s trademark. Nor is the Respondent merely describing the Complainant’s product or comparing the Complainant’s product to that of the Respondent. The Respondent does not require to reference the Complainant’s mark in order to do business, and the fact that its business name may also use the terms “made” and “strong” is irrelevant as the disputed domain names reproduce the Complainant’s mark.
Finally, it must be noted that the present use of the disputed domain names is to publish pay-per-click advertising which directly targets the Complainant’s line of business. It may not have been the Respondent’s intent to publish such content, or to benefit from it commercially, as it may have been provided automatically by the Registrar. Nevertheless, the Respondent is responsible for the content that is displayed on its domain names and appears to have taken no steps to suppress this content (see sections 2.9 and 3.5 of the WIPO Overview 3.0). The present use of the disputed domain names could not confer any rights or legitimate interests upon the Respondent.
In all of these circumstances, the Panel finds that the Respondent has been unable to rebut the prima facie case put forward by the Complainant and that the Complainant has therefore carried its burden with regard to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Both of the Parties accept that the Respondent registered the disputed domain names in the clear knowledge of the Complainant’s rights, and with these in mind. Furthermore, the Respondent may be presumed to have been aware that it did not have the Complainant’s permission to use its well-known MICHELIN trademark in any domain names, notwithstanding the prior discussion of a possible “motto” for deployment within the Complainant’s business. Such unauthorized registration irredeemably taints the Respondent’s protestations that it was engaged in a good faith activity.
Furthermore, given that the Respondent acknowledges that it wishes to continue consulting to the Complainant, there are some indications that the Respondent’s motivation in registering the disputed domain names may have been to gain some form of commercial advantage in terms of a future or continuing engagement based upon its initial discussion. This points in the direction of a finding of registration and use in bad faith. Were the situation otherwise, and, for example, had the Respondent registered the disputed domain names in a misguided but well-meaning attempt to preserve the Complainant’s interests pending further discussions, the Panel would have expected it to have promptly offered to transfer the disputed domain names on an informal basis upon receiving the Complainant’s email dated April 25, 2021 and/or its reminder of May 5, 2021 rather than remaining silent as it appears to have done.
As noted above, the disputed domain names are currently used for pay-per-click advertising. Although the Respondent may not necessarily benefit commercially from this, as it appears to have been placed by the Registrar, the Respondent is nevertheless solely responsible for any content appearing on the disputed domain names. Such targeting of the Complainant’s MICHELIN trademark by providing links from the websites associated with the disputed domain names to the Complainant’s competitors is not a good faith use. The Respondent appears to have taken no steps to suppress any such content, notably failing to do so following upon the Complainant’s communications in April and May 2021, which set out the use to which the disputed domain names had been put. Although the links may have been provided by a third party and the Respondent may not have profited directly, this does not by itself prevent a finding of bad faith (see paragraph 3.5 of the WIPO Overview 3.0).
While the Respondent’s registration and use of the disputed domain names may not fit squarely within the terms of any of the examples set out in paragraph 4(b) of the Policy, as noted above, these are expressed to be non-exhaustive. Taking all of the facts and circumstances into account, the Panel is of the view that the Respondent’s registration and use of the disputed domain names could not be regarded on any view as being in good faith. Accordingly, the Panel finds that the Complainant has carried its burden in terms of paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
Andrew D. S. Lothian
Sole Panelist
Date: September 23, 2021