The Complainant is MC Projects B.V. Maastricht, Succursale de Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Liutcanova Elena, Republic of Moldova. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2020, 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 June 29, 2020, 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 June 30, 2020. 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”). On June 29, 2020, the Center sent an email in relation to the Language of Proceedings, to which the Respondent did not respond and the Complainant requested English to be the language of the proceedings. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both Romanian and English, and the proceedings commenced on July 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2020. The Center appointed Marilena Comanescu as the sole panelist in this matter on August 13, 2020. 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. Language of the Proceedings The Complainant has requested that the language of proceedings be English and the Respondent did not reply to the Center’s email related to the language of the proceedings, nor provided any Response in any language whatsoever. Under paragraph 11 of the Rules, the language of the proceeding is the language of the registration agreement of the disputed domain name, unless both parties agree otherwise, or the panel determines otherwise based on one party’s request. UDRP s panel decide that proceeding should be conducted in another language generally when it is necessary due to different nationalities of the parties and when the complainant does not understand the language of the registration agreement and it would therefore be unfairly disadvantaged by the fact that it must translate all the documents involved in such proceeding. In the present case, the Complainant does not understand Romanian. The Respondent, having been notified of the present proceeding in both English and Romanian, has failed to file a Response, or to comment on the language of the proceeding. The Panel considers that the Complainant will only be disadvantaged if required to translate the Complaint into Romanian and the proceeding will be unduly delayed. Also, as stated by the Complainant, the Panel further agrees that English is the primary language for international relations. For all the above, the Panel decides that English is the language of these proceedings. 5. Factual Background The Complainant is a joint venture of Michelin, one of the leading tire company which is present in 171 countries and has about 114,000 employees. The tires under UNIROYAL mark are used in the United States of America since 1892 and they are related to significant innovations in this field, such as the first ever “rain tyre” launched back in 1969. The Complainant holds trademark rights for UNIROYAL, such as the Moldavian word trademark UNIROYAL registration No. 2R 2338 filed on June 10, 1994 and registered on July 24, 1995, for goods in the International Classes 1, 5, 12, 17 and 25. The Complainant’s trademark UNIROYAL is well-known worldwide. See also Michelin Recherche et Technique S.A. v. Domain Admin, Private Registrations Aktien / PrivacyProtect.org,WIPO Case No. D2013-2003; and MC Projects B.V. Maastricht, succursale de Granges-Paccot v. Tino Di Febo,WIPO Case No. D2013-0520. The disputed domain name was registered on November 11, 2018 by a physical person. At the time of filing the Complaint, the disputed domain name was directed to an error page stating “this site can’t be reached”. According to the evidence provided as Annex 1 to Complaint, before commencing the present proceedings, the disputed domain name was used to redirect to an online retail website offering for sale the Complainant’s UNIROYAL products together with third parties’ competing goods. On March 11, 2019 the Complainant sent a cease and desist letter to the Respondent, followed by several reminders, asserting its trademark rights and requesting the transfer of the disputed domain name to it. The Respondent did not respond. 6. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark UNIROYAL, that the Respondent has no rights or legitimate interests in the disputed domain name and, that the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will further analyze the concurrence of the above circumstances. A. Identical or Confusingly Similar The Complainant holds rights in the UNIROYAL trademark. The disputed domain name It is well established in decisions under the UDRP that the country-code Top-Level Domain (“ccTLD”) or generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.md”, “.best”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. Given the above, the Panel finds that the disputed domain name is identical to the Complainant’s trademark UNIROYAL, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark UNIROYAL, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. Under the Policy, “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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case. According to the evidence provided in Annex 1 to Complaint, the Respondent has used the disputed domain name in connection with a website selling UNIROYAL branded goods as well as competing goods of third parties. In certain cases, panels have recognized that resellers, distributors using a domain name containing a complainant’s trademark to undertake sales related to complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Accordingly, in this case, the key question under this element is whether the Respondent’s use of the disputed domain name amounts to a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. The current state of UDRP panel consensus in relation to this issue is helpfully summarized in the section 2.8 of the WIPO Overview 3.0, based on panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. According to the “Oki Data test”, several cumulative requirements will be applied in the specific conditions of a UDRP case, including the fact that the site must accurately and prominently disclose the registrant’s relationship with the trademark holder (the complainant) and that the respondent must use the site to sell only the trademarked goods or services. In this case, according to the available record, on the website corresponding to the disputed domain name there was no indication regarding the relationship between the Parties and the Respondent is using the site to also sell third parties’ competing goods. This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainant holds trademark rights for UNIROYAL for decades and its trademark is famous worldwide. The disputed domain name was created in 2018 and incorporates the Complainant’s mark entirely. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark. Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line 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 or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith. The Respondent was using without permission the Complainant’s well-known trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with the Complainant. This false impression was increased by the incorporation of the Complainant’s trademark UNIROYAL in the disputed domain name, the identical and similar goods offered on the website corresponding to the disputed domain name, the unauthorized featuring of the Complainant’s mark, including the reproduction of the Complainant’s official logo. Further, it has been found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, bad faith presumption of registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0. Furthermore, the Respondent refused to react to the Complainant’s letters and to participate in the present proceedings in order to put forward any arguments in its favor. Such facts, together with all the other elements in this case, constitute, in the eyes of this Panel, further evidence of bad faith behaviour. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 8. 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 name Marilena Comanescu
Sole Panelist
Date: August 20, 2020
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