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 (“US”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 7, 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 September 8, 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 September 13, 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 September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2021.
The Center appointed Michael D. Cover as the sole panelist in this matter on October 15, 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 company registered and headquartered in Clermont-Ferrand, France. The Complainant is a leading tyre company in the world and designs and distributes tyres around the world, as well as providing a range of other services, such as maps and guides. The Complainant has 117 production sites, is present in 171 countries around the world and operates 69 tyre manufacturing facilities around the world. The Complainant was established in 1889 and now has 114,000 employees.
The Complainant is also the publisher of the MICHELIN Guide, first launched in 1920, which is a restaurant, hotel and tourism guide. In addition, the Complainant has since 2001 been providing a series of digital services and Apps for travel assistance.
The Complainant is the proprietor of MICHELIN registered trademarks around the world, in particular US trademark registration No 3684424 MICHELIN (and Michelin Man device) registered in September 15, 2009, International trademark registration No. 1245891 MICHELIN registered on December 10, 2014 and International trademark registration No. 771031 MICHELIN registered on June 11, 2001.
The Complainant has registered the domain name
The Respondent is Carolina Rodrigues, Fundacion Comerico Electronico, with a location in Panama.
The Disputed Domain Name was registered on March 1, 2021 and resolved to parking pages, displaying commercial links relating to the Complainant’s field of activity, as well as having an email server configured on it. Currently, the Disputed Domain Name randomly redirects towards different websites.
The Complainant sent on April 26, 2021 a cease and desist letter to the then contact details of the Respondent, followed by several reminders, but received no response.
5. Parties’ Contentions A. Complainant Identical or Confusingly SimilarThe Complainant submits that the Disputed Domain Name is confusingly similar to the Complainant’s trademark MICHELIN, which, the Complainant notes, previous Panels have decided is well-known or famous. The Complainant also notes that the Disputed Domain Name reproduces its MICHELIN trademark in its entirety and that, in many WIPO Decisions, Panels considered that the incorporation of a well known trademark in its entirety may be sufficient to establish that a disputed domain name is confusingly similar to a complainant’s trademark.
The Complainant continues that the Disputed Domain Name associates the Complainant’s trademark with the term “sipers”, which is typosquatting of the word “wipers”, which targets the Complainant’s field of activity, alluding to the Complainant’s MICHELIN wipers, and then submits that, where the relevant trademark is recognizable within a disputed domain name, the addition of a descriptive, geographical, meaningless or other term, including a generic term, would not prevent a finding of confusing similarity. Finally, submits the Complainant, the mere addition of a generic Top-Level Domain (“gTLD”), such as “.com”, is irrelevant, as it is well established that this is insufficient to avoid a finding of confusing similarity.
The Complainant concludes that, that by registering the Disputed Domain Name, the Respondent has created a likelihood of confusion with the Complainant’s prior trademark MICHELIN and that is likely that consumers could be misled into thinking that it is, in some way, associated with the Complainant. Therefore, says the Complainant, the Disputed Domain Name is confusingly similar to the trademark MICHELIN, in which the Complainant has rights, and therefore the condition of paragraph 4(a)((i) of the Policy is fulfilled.
Rights or Legitimate InterestsThe Complainant states that the Respondent is neither affiliated with the Complainant in any way and nor has it been authorized to use its MICHELIN trademark or to seek registration of a domain name incorporating that trademark. The Complainant continues that the Respondent cannot claim prior rights in the Disputed Domain Name, as the Complainant’s MICHELIN trademark precedes the registration of the Disputed Domain Name by years.
The Complainant submits that the Respondent is not commonly known by the Disputed Domain Name nor by the trademark MICHELIN and that there is no evidence to this effect. The Complainant continues that the Respondent cannot assert that, before any notice of this dispute, it was using or had made demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The Complainant notes that the Disputed Domain Name, which incorporates the Complainant’s trademark MICHELIN in its entirety, redirects towards fraudulent pages, including a parking page displaying different commercial links, which does not constitute active or fair use of the Disputed Domain Name and may lead Internet users into believing that that the Disputed Domain Name will direct them to the official website of the Complainant.
The Complainant also notes its attempts to contact the Respondent, with no result, and the fact that the Respondent registered the Disputed Domain Name using a privacy shield to hide the Respondent’s identity, which behavior, says the Respondent, highlights the fact that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant states that the fact that the Respondent may be a typosquatter is additional proof that the Respondent lacks rights and legitimate interests in the Disputed Domain Name and that, with the presence of email servers and the character of the fraudulent redirections from the Disputed Domain Name, the Respondent could be engaged in a phishing scheme.
Having concluded that, given the Complainant’s goodwill and renown worldwide and the confusing similarity between the Disputed Domain Name and the Complainant’s MICHELIN trademark, it is implausible to conceive a circumstance in which the Respondent legitimately could use the Disputed Domain Name and submits that it is undoubtedly established that the Respondent has no rights or legitimate interests in the Disputed Domain Name under Paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad FaithThe Complainant notes that paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and used the Disputed Domain Name in bad faith and notes that bad faith may be found where a respondent knew or should have known of the complainant’s trademark rights and nevertheless registered a domain name. The Complainant maintains that it is implausible that the Respondent was unaware of the Complainant when he registered the Disputed Domain Name. In support of this, the Complainant submits that the Complainant is well known throughout the world, that the Disputed Domain Name is very obviously connected with the Complainant’s MICHELIN trademark and that the registration of the confusingly similar Disputed Domain Name, with the replacement of the letter “w” by “s” is a form of typosquatting and typosquatting is itself evidence of bad faith. The Complainant also reminds the Panel that the Disputed Domain Name was registered through a privacy shield service and this in itself can indicate registration in bad faith. The Complainant also submits that a quick trademark search would have revealed to the Respondent the existence of the Complainant and its MICHELIN trademarks. Finally, the Complainant submits that that the Respondent is a well known typosquatter, who has already been the subject of UDRP proceedings and cites various such decisions.
The Complainant concludes that it is established that the Respondent registered the Disputed Domain Name in bad faith.
The Complainant also submits that the Respondent used the Disputed Domain Name in bad faith. In particular, the Complainant notes that previous Panels have decided that, in the absence of the owner of a well known trademark giving a licence or permission, no bona fide or legitimate use of a domain name could be claimed. The Complainant also submits that the presence of email servers points towards a phishing exercise on the part of the Respondent.
Moreover, the Complainant states that the situation of the Disputed Domain Name has changed since its detection by the Complainant, from a parking page, which displays commercial links related to the Complainant’s field of activity, to a different fraudulent websites, and pages. The Complainant asserts that this change implies that the Respondent is not willing to properly configure a website or page on the Disputed Domain Name and is only using it to attract Internet users and make profits.
The Complainant concludes that, for all these reasons, it is confirmed that the Disputed Domain Name is used in bad faith and that, consequently, it is established that the Respondent both registered and used the Disputed Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
Remedy requested by the Complainant
The Complainant requests that the Panel order that the Disputed Domain Name be transferred to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Complainant must establish on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel accepts and finds that the Complainant has established rights in its trademark MICHELIN. The Complainant has registered rights going back to 2001, which is sufficient for the purposes of paragraph 4(a)(i) of the Policy. The Panel also finds, as previous Panels have found, that the Complainant’s MICHELIN trademark is well known.
The Panel also accepts and finds that the Disputed Domain Name is confusingly similar to the Complainant’s well known trademark MICHELIN, in which the Complainant has established rights. The Disputed Domain Name incorporates the Complainant’s trademark MICHELIN in its entirety and, in assessing confusing similarity, it is well established that the incorporation of an additional element, in this case “sipers”, does not avoid a finding of confusing similarity.
Lastly, under this heading, it is well established that the addition of a gTLD, such as “.com” does not avoid a finding of confusing similarity.
Accordingly, the Panel decides that the Disputed Domain Name is confusingly similar to the Complainant’s trademark MICHELIN, in which the Complainant has rights, and that the provisions of the Policy paragraph 4(a)(i) have been met.
B. Rights or Legitimate InterestsThe Panel accepts and finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel accepts the submissions of the Complainant, which have not been challenged by the Respondent, that the Respondent is not affiliated with or authorized by the Complainant to use the Complainant’s MICHELIN trademark nor has the Respondent been commonly known by the Disputed Domain Name.
The addition of the term “sipers” points towards typosquatting, either as a misspelling of “wipers”, a product produced by the Complainant, or “sipes”. The use that has taken place of the Disputed Domain Name, involving resolving to a parking website, as already mentioned in this Decision, is not use in connection with a bona fide offering of goods or services, as such links take advantage of the goodwill and reputation of the Complainant’s well known MICHELIN trademark or otherwise are likely to mislead consumers.
The Panel also accepts and finds that the Respondent, before any notice of the dispute, has made no demonstrable preparations to use the Disputed Domain Name (or a name corresponding to the Disputed Domain Name) in connection with a bona fide offering of goods or services, that the Respondent has made no legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Claimant’s MICHELIN trademark.
The Panel accordingly finds that the provisions of the Policy, paragraph 4(a)(ii) have been met.
C. Registered and Used in Bad FaithThe Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith. The Panel infers from the documents and material before it that the Respondent was aware or should have been aware of the Complainant’s well known MICHELIN trademark, which was both used and registered well before the registration of the Disputed Domain Name in March 2021. It is well established from previous Panel Decisions that the mere registration of a domain name that is confusingly similar to a well known trademark by a non-affiliated or unauthorized entity as here can of itself create a presumption of bad faith. Whilst the Panel accepts that the term “sipers” in the Disputed Domain Name may be a corruption of “wipers” and therefore a possible instance of typosquatting, the Panel also considers that the term “sipers” may also be a reference to “sipes”, which are the grooves or patterns on tyres, which would likely increase the possibility of confusion further. Therefore, the Panel notes that the composition of the Disputed Domain Name creates the impression that it has a direct connection with the Complainant, which is supportive of Respondent’s bad faith registration.
The Panel accepts that the Respondent has registered and, indeed, used the Disputed Domain Name for the purpose of attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s MICHELIN trademark as to source or affiliation. This is supported by the fact that the Disputed Domain Name did resolve to a parking website, with links to offerings of goods and services of a similar nature to those of the Complainant.
The Panel accordingly finds that the provisions of the Policy, paragraph 4(a)(iii) have been met.
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,
Michael D. Cover
Sole Panelist
Date: October 29, 2021