The Complainants are Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France and Michelin Recherche et Technique S.A. of Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Sync Asia Network Limited, David Danier of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2012. On April 10, 2012, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On April 11, 2012, Dynadot, LLC 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2012.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on May 16, 2012. 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 Complainants in these proceedings are Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S.A., two companies organized under the laws of France and Switzerland respectively. The Complainants have a worldwide reputation in automotive industry including tires and in French gastronomy.
Michelin Recherche et Technique S.A. is the owner among others, of the following trademarks:
- Hong Kong Trademark BFGOODRICH No. 1990B0709, registered on September 14, 1985 duly renewed and covering tires in class 12;
- Chinese Trademark BFGOODRICH No. 292648, applied on September 4, 1986, duly renewed and covering tires in class 12;
- Indian Trademark BFGOODRICH No. 752558, applied on February 19, 1997, duly renewed and covering tires in class 12.
In addition to these trademarks, the Complainants are the owners of several domain names incorporating the trademark BFGOODRICH, according to their uncontested allegations and proof submitted, as follows:
- registered on August 15, 1996;
- registered on June 27, 2003;
- registered on August 27, 2002;
- registered on March 13, 2011.
Further, the Complainants are established in Hong Kong since 1987, according also to their uncontested allegations.
The Panel is unaware of any further information relative to this case with regard to the Respondent, except that given by the Complainants and mentioned above.
The disputed domain name was registered by the Respondent on July 16, 2011. 5. Parties’ Contentions A. Complainants
The Complainants contend that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainants have rights, that the Respondent has no rights or legitimate interests in the disputed domain name and has not been commonly known by the domain name, and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are telling: since the Complainants have the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainants’ request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainants have proved their case, as required by the Policy. See FNAC v. Gauthier Raymond,WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic,WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd,WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainants have presented sufficient evidence that they own the rights in the trademark BFGOODRICH. They are also the owners of the domain names , , , and .
The mere fact that the Respondent has added to the mark BFGOODRICH the gTLD suffix “tv” does not affect the essence of the matter: the disputed domain name is identical to the trademark of the Complainants and in the circumstances of this case is by itself sufficient to establish criterion of identity or confusing similarity for purposes of the Policy, as many panels have found in the past, see e.g. Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Limited,WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC,WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir, Boyiko and Andrew Michailov,WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainants have discharged their burden of proof on this point and holds that the disputed domain name is identical or confusingly similar to the Complainants’ trademark BFGOODRICH. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of three circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to and the legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: in the Panel’s view, the Respondent is not using the disputed domain name to make any bona fide offering of goods or services.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights. In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue. Again, in this case there is no such indication from the record.
Further according to the uncontested allegations of the Complainants the Respondent has no trademark registrations including the word “bfgoodrich” in Europe or in Hong Kong where the Respondent is located.
Furthermore, it is to be noted that the Respondent did not present evidence of any license by the Complainants, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainants’ argumentation is based on the four circumstances mentioned in paragraph 4(b) of the Policy, in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
In reviewing the present case, it appears that the Respondent has registered the disputed domain name in order to sell it to the Complainants. The Respondent offered to buy the disputed domain name with five other domain names for EUR 1200, price which is more than the registration costs of these domain names. The Respondent further said that “I am a […] cybersquatter”, according to the uncontested allegations of the Complainants, and this allegation even appears to have been admitted to by Mr. Danier in an email to the Complainant counsel of July 18, 2012.
The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915.
The bad faith of the Respondent may also be reinforced through a simple, logical process, as well, in the sense that it would, indeed, be highly unlikely that the Respondent would register randomly and unintentionally a domain name, that is identical to the Complainants’ BFGOODRICH trademark. Rather, it seems to this Panel more likely that such registration and use would be motivated by hoped-for capitalization, i.e. to sell it to the Complainants, as mentioned above.
As a consequence to the above, the Panel finds that the Respondent registered and uses the disputed domain name in bad faith. Passive holding of a disputed domain name can be considered as used in bad faith, inter alia, because of the Respondents behavior.
Accordingly, the Panel finds that the Complainants have successfully proven that the disputed domain name is identical or confusingly similar to trademarks and service marks in which they have rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and uses the disputed domain name in bad faith. 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 name be transferred to the Complainants.
Christos A. Theodoulou
Sole Panelist
Dated: May 22, 2012
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