ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Compagnie Générale des Etablissements Michelin, MC Projects B.V. Maastricht, succursale de Granges-Paccot v. Ellie Metcalfe, Andrew Hilton, Freddie Parkin, Tegan Hardy, Taylor Holt, Freya Stokes, Ben Knight, Eleanor Page, Harrison Herbert, Maya Robinson, Shannon Gray, Samuel Carr, Niamh Bray, Aaron Howell, Sofia Sims, Abbie Humphries, Sophia Owens Case No. D2024-1707 1. The Parties The Complainant is Compagnie Générale des Etablissements Michelin, France, and MC Projects B.V. Maastricht, succursale de Granges-Paccot, Switzerland, represented by Dreyfus & associés, France. The Respondent is Ellie Metcalfe, Andrew Hilton, Freddie Parkin, Tegan Hardy, Taylor Holt, Freya Stokes, Germany; Ben Knight, Eleanor Page, Harrison Herbert, Maya Robinson, Shannon Gray, Samuel Carr, Niamh Bray, Aaron Howell, Sofia Sims, Abbie Humphries, Sophia Owens, Italy. 2. The Domain Names and Registrar The disputed domain names , , , , >bfgoodrichbrasil.com>, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,
page 2 , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , uniroyaltireskuwait.com>, , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2024. On April 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 24, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Unidentified) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on April 26, 2024. 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 May 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2024. The Center appointed Knud Wallberg as the sole panelist in this matter on June 3, 2024. 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.
page 3 4. Factual Background The Complainants in this administrative proceeding are Compagnie Générale des Etablissements Michelin (“Michelin”), France, and MC Projects B.V. Maastricht, succursale de Granges-Paccot (“MC Projects”), Switzerland. The Complainants belong to the same group of companies. The Complainants holds many registrations of the trademarks BFGOODRICH, MICHELIN and UNIROYAL including the following: ;International registration No. 1662353 of the trademark BFGOODRICH, registered on December 30, 2021, covering goods in classes 3, 6, 7, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 24, 25, 27 and 28, and designating among others: European Union, Russian Federation, Viet Nam and Singapore; United States of America registration No. 73124033, of the trademark BFGOODRICH, registered on March 21, 1978, and covering goods in class 12; European Union registration No. 001791243 of the trademark MICHELIN, registered on October 24, 2001, and covering goods and services in classes 6, 7, 12, 17 and 28; United States registration No. 72329256, of the trademark MICHELIN, registered on June 2, 1970, and covering goods and services in class 35; United States of America registration No. 72162379 of the trademark UNIROYAL, registered on September 10, 1963, and covering services in class 35and German registration No. U1998 of the trademark UNIROYAL, registered on May 15, 1974, and covering goods in class 12. The Complainants are also the holders of many domain names that contain the above-mentioned trademarks, including , , and . The disputed domain names were all registered between November 7 and 9, 2023. Most of them resolve to active websites that purports to be official websites of the Complainants, and the rest of the disputed domain names directs to error pages indicating: “Access denied”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the disputed domain names are identical or at least confusingly similar to the Complainants’ trademarks BFGOODRICH, MICHELIN and UNIROYAL respectively, since they substantially reproduce these trademarks in their entirety. The addition of geographical terms or country codes does not prevent confusing similarity, just as the generic Top-Level Domain extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain names. Furthermore, none of the Respondents are affiliated with the Complainants in any way nor have they been authorized by the Complainants to use and register their trademarks, or to seek registration of any domain name incorporating said trademarks. Furthermore, the Respondents have no prior rights or legitimate interest in the disputed domain names, nor can the Respondent assert that they have made, or are currently making, a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain or to misleadingly divert consumers, or to tarnish the trademarks at issue, in accordance with paragraph 4(c)(iii) of the Policy. On the contrary, registering 138 domain names of similar structure entirely reproducing the Complainants’ well-known trademarks and associating them to multiple countries and terms directly targeting their field of activity, seems to prove the Respondent’s cybersquatting behavior. The Complainant finally contends that the Respondents have registered and are using the disputed domain names in bad faith. The Respondents must have been fully aware of the Complainants´ rights in the BFGOODRICH, MICHELIN and UNIROYAL trademarks when they registered the disputed domain names. The fake websites that are set up on the majority of disputed domain names reproduce the Complainants’
page 4 trademark, logo and visuals, offering tires for sale under the trademarks BFGOODRICH, MICHELIN and UNIROYAL. Additionally, on the bottom of the websites, the Respondent displays copyright signs corresponding to each domain (for instance, ©2024 BFGOODRICHARGENTINA, ©2024 MICHELINARGENTINA and ©2024 UNIROYALTIRESARGENTINA), creating a false impression that Respondents would be the owners of the cited trademarks. Such use cannot be considered as being use in good faith. The rest of disputed domain names direct to error pages indicating: “Access denied”, but this state of inactivity would not translate into a finding that the disputed domain names are used in good faith, since passive holding does not preclude a finding of bad faith use. B. Respondent The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Consolidation: Multiple Complainants Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. In this matter Michelin and MC Projects belong to the same group of companies and they are acting against the same registrant (see below) for the same grievance, and the Panel finds that it would be equitable and procedurally efficient to permit the consolidation. Michelin and MC Projects will be referred to as “the Complainant” in the following. Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The Complainant thus asserts that the disputed domain names are likely to be under common control since: - The composition of the disputed domain names is identical. They all feature the Complainant´s trademarks BFGOODRICH, MICHELIN and UNIROYAL in their entirety, associated with mostly geographical terms and abbreviations referring to multiple countries, as well as a generic term directly targeting the Complainants´ field of activity. - All the disputed domain names were registered in the span of two days, between November 7 and November 9, 2023, through the same Registrar. - The identity of the registrants of the disputed domain names is masked, but they are all presumably located either in Germany or Italy - Most of disputed domain names direct to online tire sales websites for the brands concerned. While the presentation and products on sale are identical from one site to another, the text and prices displayed
page 5 correspond to the language and currency of the country identified in each domain name. The rest of the disputed domain names direct to error pages denying access. - In addition, following the disclosure of the of the identity of the domain name registrants, the Complainant noticed that the provided information does not appear to be correct as the complete postal address is missing for all the registrants and the name of the city is recorded as the postal address. Furthermore, email servers for all emails are the same “cxtmail.com” servers, whose domain name was registered very recently, back in November 2023, all of which implicates the domain name registrants are the same person or the subject to common control. The disputed domain name registrants did not comment on the Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that despite the fact that the disputed domain names are registered by 17 nominally different registrants, the above presented facts clearly support a finding that the disputed domain names and corresponding websites are subject to common control. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown to hold registered rights to the trademarks BFGOODRICH, MICHELIN and UNIROYAL for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the respective marks is reproduced within all the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, the various country names or other terms associated with geographical locations, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult task
page 6 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. Moreover, the Panel finds that the composition of the disputed domain names, further supported by the content of the immediately available websites, effectively impersonates or suggest sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Given the circumstances of the case, including the evidence on record of the use of the Complainant’s trademarks BFGOODRICH, MICHELIN and UNIROYAL, and the distinctive nature of these marks, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s mark. The Panel therefore finds that the disputed domain names were registered in bad faith. The majority of the disputed domain names have all been used to host websites, which clearly give the Internet users the impression that the website was a website of the Complainant or a website that was somehow connected to the Complainant, which is not the case. The Panel therefore finds that there can be no doubt that the disputed domain names have been used in bad faith to intentionally attempt “to attract, for commercial gain, Internet users to the Respondent’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 Respondent’s website”. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4. Noting that the disputed domain names incorporate the Complainant’s well-known trademarks BFGOODRICH, MICHELIN and UNIROYAL respectively; that the Respondent has not replied to the Complainant’s contentions; and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names and considering all the facts and evidence of the case, this is especially so where the composition of the disputed domain names makes it clear that the particular trademarks are being targeted. Therefore, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. The Panel finds that the Complainant has established the third element of the Policy.
page 7 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 disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , be transferred to the Complainant Compagnie Générale des Etablissements Michelin. The Panel further orders that the disputed domain names , , , , , , , , , , , , ,