The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Motorbanden Quickservice, the Netherlands.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2021. On July 29, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On July 30, 2021, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 25, 2021. In accordance with the Regulations, article 7.1, the due date for Response was September 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2021.
The Center appointed Alfred Meijboom as the panelist in this matter on October 1, 2021. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual BackgroundThe Complainant is a technology leader in tires for all forms of mobility, and was established in 1889 in France. The Complainant operates 117 production sites in 26 countries, has a commercial presence in 170 countries and 124,000 employees worldwide.
The Complainant is the owner of the following registered word marks, which are valid in the Netherlands:
- European Union trademark MICHELIN with registration number 001791243, registered on October 24, 2001, for goods and services in classes 6, 7, 12, 17, and 28 for, inter alia, expansion joints, couplings, and gaskets;
- European Union trademark MICHELIN with registration number 007333834, registered on May 14, 2009, for goods and services in classes 1, 8, 9, 11, 12, 16, 20, 21, and 28 for, inter alia, antifreeze solutions, hand tools, and inner tubes for pneumatic tires; (the “MICHELIN Marks”).
SIDN informed the Center that the disputed domain name was first registered on October 9, 2012, and that the date of registration of the disputed domain name by the current registrant is December 22, 2016. At the time of the Decision, the disputed domain name resolves to a hosting provider’s page.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to the MICHELIN Marks as it reproduces these in their entirety with the mere addition of the term “motorbanden” (i.e. “motorcycle tires” in Dutch), which is insufficient to exclude confusing similarity. The Complainant alleges that the term “motorbanden” only serves to enhance the false impression that the disputed domain name is somehow officially related to the Complainant since the term relates to the Complainant’s main field of activity.
The Complainant also alleges that the Respondent has no rights to or legitimate interests in the disputed domain name as the Respondent is not commonly known by the disputed domain name nor by the name “Michelin”. The Complainant acknowledges that the Respondent is an authorized dealer of the Complainant but asserts that it has never granted permission to the Respondent to register the MICHELIN Marks or to seek registration of any domain name incorporating said trademark. The Complainant further alleges that the Respondent, in order to be able to make a bona fide offering of goods or services should have been at least selling the Complainant’s goods or services via the website under the disputed domain name, while the Respondent rather never used the disputed domain name after its registration. The Complainant further asserts that the disputed domain name associates the MICHELIN Marks with the term “motorbanden”, which the Complainant considers further evidence of the fact that the Respondent wishes to give an overall impression that the disputed domain name is endorsed by the Complainant, which is not and cannot constitute fair use especially as the disputed domain name is not being used in a way that may properly disclose the relationship between the Complainant and the Respondent.
The Complainant asserts that the MICHELIN Marks are well known and have a reputation worldwide, so that it is unlikely that the Respondent was unaware of the Complainant when registering the disputed domain name, even more so considering the fact that the Respondent indicates its status as an authorized dealer of the Complainant in the Netherlands. The Complainant asserts that the disputed domain name entirely reproduces the MICHELIN Marks and associates it to the generic term “motorbanden” so that bad faith must be found since the disputed domain name is so obviously connected with a well-known trademark registration. The Complainant also contends that the MICHELIN Marks significantly predate the registration of the disputed domain name and that knowledge of the Complainant’s rights at the time of registration of the disputed domain name also constitutes bad faith registration.
The Complainant further notes that it sent the Respondent a cease and desist letter, to which the Respondent initially did not reply, but eventually prompted the reply of the Respondent which asserted that it is an authorized reseller of Complainant, that the disputed domain name was intended to provide information about the Complainant’s goods and that the Respondent would have rights in the disputed domain name since its company name encompasses the expression “motorbanden”, reproduced in the disputed domain name. The Respondent thus refused to transfer the disputed domain name to the Complainant, claiming it would use the same, for an information website on the Complainant’s goods. In this respect, the Complainant observed that the Respondent while registering the disputed domain name, had also registered the domain name
In these proceedings, the Respondent has not replied to the Complainant’s contentions.
6. Discussion and FindingsArticle 10.3 of the Regulations provides that, in the event that a respondent fails to submit a response, the complaint shall be granted, unless the panelist considers it to be without basis in law or fact.
According to article 2.1 of the Regulations, the requested remedy shall be granted if the complainant asserts and establishes each of the following:
(a) that the disputed domain name is identical or confusingly similar to:
(i) a trademark, or trade name, protected under Dutch law in which the complainant has rights; or
(ii) a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in The Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in The Netherlands under which the complainant undertakes public activities on a permanent basis; and
(b) that the respondent has no rights to or legitimate interests in the disputed domain name; and
(c) that the disputed domain name has been registered or is being used in bad faith.
In view of the fact that the Regulations are substantially similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP may be relevant to the determination of this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
Especially relevant to the current dispute is the case which was decided under the UDRP between the same parties on August 27, 2021, Compagnie Générale des Etablissements Michelin v. Motorbanden Quick Service,WIPO Case No. D2021-2226, in which matter the Complainant’s statements were, in so far as relevant to the decision, the same as those in the current proceeding, whereby the domain name in dispute inWIPO Case No. D2021-2226 is
In the current proceeding the Complainant alleges that the disputed domain name is confusingly similar to the MICHELIN Marks, just as it asserted inWIPO Case No. D2021-2226. It is established case law under the Regulations that the TLD “.nl” may be disregarded in assessing the similarity between the trademark on the one hand and the disputed domain name on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008), just as the panel inWIPO Case No. D2021-2226 disregarded the TLD “.com” in the domain name
Noting also the panel’s findings on the corresponding facts and allegations submitted by the Complainant inWIPO Case No. D2021-2226, the Panel in the present case finds that the Respondent likewise has engaged in bad faith conduct.
In conclusion, the Panel is satisfied that the Complainant (a) shown that the disputed domain name is confusingly similar to the MICHELIN Marks, (b) made out an unrebutted prima facie case that the Respondent has no rights to or legitimate interests in the disputed domain name, and (c) shown that the disputed domain name has been registered or is being used in bad faith, for which reasons the Panel finds that the Complainant has satisfied the requirement of article 2.1 of the Regulations.
7. DecisionFor all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name
Alfred Meijboom
Panelist
Date: October 15, 2021