The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is 1&1 Internet Inc, United States of America (“United States”) / Lance DeWitt, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2021. On August 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2021, 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 August 9, 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 August 11, 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 August 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2021.
The Center appointed George R. F. Souter as the sole panelist in this matter on September 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 BackgroundThe Complainant is a French company, established in 1889, with over 124,000 employees in 170 countries, with 117 manufacturing facilities and sales agencies in 12 countries. Its core business is in tyres (or “tires” in United States English), sold under its MICHELIN trademark. The Complainant has also, since 1920, managed a magazine, under the name GUIDE MICHELIN (or MICHELIN GUIDE in English), recommending hotels, restaurants, etc., for travellers.
Details of extensive registrations of its trademark MICHELIN internationally have been supplied to the Panel by the Complainant. These include United States trademark registration number 892045 for MICHELIN registered on June 2, 1970, and International Registration number 740073, registered on August 8, 2000.
The disputed domain name was registered on July 1, 2020, and resolves to a website, which appears to be under construction, and already includes two commercial advertisements for cosmetics.
The Complainant tried to amicably resolve the dispute through its cease-and-desist letter and reminders requesting the Respondent to transfer the disputed domain name to the Complainant free of charge, but this did not come to fruition.
5. Parties’ Contentions A. ComplainantThe Complainant alleges that the disputed domain name is confusingly similar to its MICHELIN trademark, containing its MICHELIN trademark in its entirety, followed by the non-distinctive or descriptive words “race” and “tires”.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular, that it has not authorized the Respondent to use its MICHELIN trademark in connection with registration of a domain name, or otherwise.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Complainant has provided evidence of its rights in the MICHELIN trademark though trademark registrations in various jurisdictions. Furthermore, the Panel has been made aware that the Complainant’s MICHELIN trademark has been recognized as well-known in a number of prior decisions under the UDRP, including the relatively recent case of Compagnie Générale des Etablissements Michelin v. World Industrial, LNQ,
WIPO Case No. D2019-0553. The Panel in this case also recognizes the Complainant’s MICHELIN to be well known.
It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) is generally irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and so finds.
The Complainant’s MICHELIN trademark is clearly recognizable in the disputed domain name. Accordingly, the added words “race” and “tires” do not prevent a finding of confusing similarity, and the Panel so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsIt is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s well-known trademark and descriptive terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant’s MICHELIN trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds.
The Panel is of the opinion that anyone connecting to the website operated under the disputed domain name would be likely to assume that it was connected to or authorized by the Complainant, and to be, consequently deceived, to the detriment of the Complainant. Although the website operated under the disputed domain name does not currently offer goods and services in direct competition with those of the Complainant, it is, in the Panel’s opinion, clearly not bona fide use, and taking into account the broader circumstances of the case, including the fame of the Complainant’s trademark and implausibility of any good faith use to which the disputed domain name could be put, justifies a finding of bad faith, and the Panel so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 name
George R. F. Souter
Sole Panelist
Date: October 4, 2021