The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Daniel Powell, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2021. On February 5, 2021, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On February 8, 2021, Web Address Registration Pty Ltd 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2021. The Center appointed Alistair Payne as the sole panelist in this matter on March 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 Background The Complainant is a global tyre company. It is present in more than 170 countries, has approximately 112,300 employees and operates 68 production plants in 17 different countries. Michelin Australia Pty Ltd (“Michelin Australia”) was established in October 1997 to manage and develop the Complainant’s business in the markets of Australia, New Zealand and the Asia Pacific region. The products marketed by Michelin Australia include tyres for passenger car, light truck, earthmover equipment, heavy truck and bus, agricultural and industrial equipment, aviation, motorcycle and bicycle. “Tyreplus” in Australia is Michelin Australia’s network of professional independent tyre retailers that offer high quality products and automotive services at competitive prices. The TYRE PLUS business is a one-stop-shop offering a wide choice of major tyre brands, lubricants, batteries, suspension and braking systems. The Complainant owns various trade mark registrations for its TYRE PLUS trade mark, including Australian Trade Mark Registration for TYRE PLUS and device No. 918928, registered on July 5, 2002 and Australian Trade Mark Registration for TYRE PLUS and device No. 1744394, registered on January 5, 2006. In addition, the Complainant and its affiliates operate, among others; the following domain names reflecting its trade mark which resolve to promotional websites for its services: The Respondent owns the disputed domain name which appears to have been originally registered on June 7, 2019 and formerly resolved to a website branded as “Tyresplus Orange NSW” with links to several tires such as “black bear” “pirelli”, “west lake tires”, “goodride tires” and “sailun tires”, and with a contact address in Orange, New South Wales but at the time of filing resolves to an inactive website. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name reproduces entirely its TYRE PLUS trade mark with only the addition of the letter “s” as the plural of the word “tyre”. It says that this added letter does not significantly affect the appearance of the disputed domain name nor can it be considered as material alteration of the trade mark, but a linguistic mistake that could be reasonably be made by the majority of consumers. The Complainant says that that this amounts to “typosquatting” and that the disputed domain name is confusingly similar to the Complainant’s trade mark. In relation to rights or legitimate interests the Complainant says that the Respondent is not affiliated with the Complainant in any way and nor has the Respondent been authorised by the Complainant to use and register its trade mark, or to seek registration of any domain name incorporating its trade mark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. It says that its registration of the TYRE PLUS trade marks preceded the registration of the disputed domain name by many years. The Respondent adds that it is not commonly known by the disputed domain name or the name “Tyreplus” and there is no evidence that the Respondent is commonly known by the “Tyreplus” name. The Complainant submits that the disputed domain name currently redirects to a page under construction, which is inactive and should be considered as a passive holding of the disputed domain name. The Complainant says that there is no indication that the Respondent is using, or intending to use, the disputed domain name, in a fair manner which further demonstrates a lack of legitimate interests or rights in the disputed domain name. According to the Complainant, the Respondent has not made any reasonable or demonstrable preparations to use the disputed domain name and neither is there any evidence that it has an intention to make noncommercial or fair use of the disputed domain name. The Complainant asserts that the Respondent has no legitimate interests or rights in the disputed domain name and that it has no connection to the Respondent’s business. It notes that the disputed domain name formerly resolved to a page for a business branded trading under the name “Tyres Plus Orange” but that this business has since been has re-branded to “Ed’s Shed Tyres-Wheels & Racing Fuel” and that the Respondent has no legitimate interest in continuing to hold the disputed domain name, even if on behalf of the former “Tyres Plus Orange” business. Furthermore, says the Complainant, an email server has been configured on the disputed domain name and it argues that there is a risk that the Respondent could be engaged in a phishing scheme. Finally, says the Complainant, considering the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is virtually identical to the Complainant’s TYREPLUS trade mark, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights. As far as bad faith is concerned the Complainant submits that it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name in circumstances that the Complainant and its business is well-known throughout the world including Australia. Further, it says that considering the composition of the disputed domain name and that it entirely reproduces the Complainant’s TYRE PLUS trade mark but with the addition of the letter “s” after the term “tyre” and that the disputed domain name makes direct reference to the Complainant’s field of activity. It is impossible that the Respondent did not have the Complainant’s trade mark and company name in mind when registering the disputed domain name. In the circumstances this amounts, says the Complainant, to opportunistic bad faith. Under the Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. According to the Complainant, this means that it is the registrant’s duty to verify that the registration of the disputed domain name does not infringe the rights of any third party before registration. A quick TYRE PLUS trademark search would have revealed to the Respondent the existence of the Complainant and its trade mark, or in the alternative, a simple search via Google or any other search engine using the keyword “TYREPLUS” would have demonstrated that all first results relate to the Complainant’s products or business. Taking into account the worldwide reputation of the Complainant and its trade marks it is hard to believe, says the Complainant, that the Respondent could have been unaware of the existence of the Complainant and its trade marks at the time of registration of the disputed domain name. The Complainant argues in relation to use in bad faith that previous Uniform Domain Name Dispute Resolution Policy (UDRP) 1 panels have considered that in the absence of any license or permission to use such a widely known trade mark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed (see for example, Alstom, Bouygues v. Webmaster,WIPO Case No. D2008-0281; Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055). The Complainant notes that the disputed domain name is currently inactive. It says that the holding amounts to passive holding in bad faith without any evident usage or purpose, that previous UDRP and auDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) and that in such cases the Panel must give close attention to all the circumstances of the respondent’s behaviour. It notes that in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the Panel concluded that the Respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by the Respondent because: (1) the Complainant’s trade mark had a strong reputation and was widely known; (2) the Respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) the Respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) the Respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement. Similarly, says the Complainant, reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith. It is more likely than not, that the Respondent’s primary motive in registering and using the disputed domain name was to capitalise on or otherwise take advantage of the Complainant’s trade mark rights through the creation of initial interest of confusion. It says that the Respondent’s immediate offer to sell the disputed domain name (without giving any reasons as to why he had registered the disputed domain name and without contesting Complainant’s trade mark rights) after having been requested to transfer it to the Complainant in a cease-and-desist letter are clear indications that he was aware of the Complainant’s trade mark when he registered the disputed domain name. The Complainant asserts that this is a further strong indication that the Respondent hoped to sell the disputed domain name to the Complainant or to a competitor of the Complainant’s, which is clear evidence of registration and use in bad faith. B. Respondent The Respondent did not file a Response. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns Australian Trade Mark Registration for TYRE PLUS and device No. 918928, registered on July 5, 2002 and Australian Trade Mark Registration for TYRE PLUS and device No. 1744394, registered on January 5, 2006. The dominant element of each of these combined word and device marks is the word mark TYRE PLUS and the Panel finds that the disputed domain name wholly contains the TYRE PLUS mark except that it has an additional letter “s” after the word “tyre”. As a result the Panel finds that the disputed domain name is confusingly similar to the TYRE PLUS mark and that the additional letter “s” which indicates the plural form “tyres” does not alter this finding. The country-code Top Level Domain (“ccTLD”) in the disputed domain name “.com.au” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. As a result, the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that the Respondent is not affiliated with the Complainant in any way and that the Respondent has not been authorised by the Complainant to use and register its trade mark, or to seek registration of any domain name incorporating the Complainant’s trade mark. It has also asserted that the Respondent is not commonly known by the disputed domain name or the name “Tyreplus” and that it has no prior rights or legitimate interests in the disputed domain name and notes that the Complainant’s registration of the TYRE PLUS trade marks preceded the registration of the disputed domain name by many years and that the Complainant developed a substantial business through a series of independent dealers in Australia that operate a one-stop shop tyre and vehicle service business under the TYRE PLUS mark. Noting that the disputed domain name currently redirects to a page under construction which is inactive the Complainant has also alleged that there is no indication that the Respondent is using or intending to use the disputed domain name for a fair or noncommercial use and that this appears to be a case of passive use by the Respondent. The Panel notes in this regard that while the disputed domain name formerly resolved to a page for a business branded trading under the name “Tyres Plus Orange”, that business has since been re-branded to “Ed’s Shed Tyres-Wheels & Racing Fuel” and it is unclear what relation if any, the former or current businesses have to the Respondent or to the disputed domain name except that the Complainant suggests that it may be the case that the Respondent through its marketing business Reline Media was involved in the development or maintenance of the website originally at the disputed domain name and possibly its original registration. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which case has not been rebutted by the Respondent. In these circumstances and also for the reasons set out under section C below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint succeeds under this element of the Policy. C. Registered or Subsequently Used in Bad Faith Under paragraph 4(a)(iii) of the Policy the Complainant must demonstrate that the disputed domain name has been registered or used in bad faith. The Complainant’s trade mark rights were registered in Australia many years prior to the registration of the disputed domain name. Further, the Complainant registered its first domain name In addition, section 3.2 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) notes that consistently with section 3.3 of the WIPO Overview 3.0, past panels have found that the passive holding of a domain name can amount to bad faith in certain circumstances. Relevant factors to be considered 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. It appears to the Panel that the Complainant’s TYRE PLUS mark enjoys a well established reputation and goodwill in Australia in connection with Michelin Australia’s network of professional independent tyre retailers that trade under this name and mark. Secondly, the Panel notes that the Respondent has failed to respond to the Complaint. Although he has not concealed his identity, considering that the disputed domain name is virtually identical to the Complainant’s TYRE PLUS trade mark and in view of the developed business carried on under the Complainant’s mark in Australia, it is difficult to conceive of any plausible circumstance in which the Respondent could legitimately use the disputed domain name without misleading consumers or taking unfair advantage of the Complainant’s rights. On this basis the Panel finds that the Respondent’s use of the disputed domain name amounts to passive holding in bad faith. Under paragraph 2 of the Policy, it is established that when someone registers a domain name, he represents and warrants that to his knowledge, the registration of the domain name will not infringe the rights of any third party. The onus is upon the registrant to verify that the registration of the disputed domain name would not infringe the rights of any third party before registration. As noted above a trade mark search in Australia or even a Google search would have identified the Complainant’s rights in its TYRE PLUS mark straight away had the Respondent been in any doubt. It is apparent that the Respondent either failed to do this, or possibly chose not to bother even though, as this Panel has already found, he was more likely than not well aware of the Complainant’s TYRE PLUS mark when he registered or acquired the disputed domain name. As a consequence, the Respondent made a false representation upon making his application to register the disputed domain name and under paragraph 4(b)(v) of the Policy this amounts to evidence of registration and use of the disputed domain name in bad faith. For these reasons the Panel finds that the Respondent both registered and used the disputed domain name in bad faith and the Complaint also succeeds under this element of the Policy. 7. Decision For all 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 Alistair Payne 1 Given the similarities between the .auDRP and the UDRP, the Panel will refer to the UDRP and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) when relevant.
Sole Panelist
Date: March 23, 2021
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