WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Ozan Ertekin, Necati Ergin, Zeynep Elif
Case No. D2012-2482
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & Associés, of Paris, France.
The Respondents are Ozan Ertekin of Izmir, Turkey, Necati Ergin of Urla, Turkey and Zeynep Elif of Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names <e-michelin.com>, <michelin-lastikcim.com> and <michelin-online.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 19, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondents Ozan Ertekin, Necati Ergin and Zeynep Elif are listed as the registrants of <e-michelin.com>, <michelin-lastikcim.com> and <michelin-online.com> respectively 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 Respondents of the Complaint, and the proceedings commenced on December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2013. On the same date, the Center received an email communication from the Respondent in relation to <e-michelin.com> requesting no further communication and offering to sell the domain name.
The Center appointed David Stone as the sole panelist in this matter on January 21, 2013. 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.
The Complainant requests the consolidation of multiple respondents in a single administrative proceeding under paragraph 3(c) or 10(e) of the Rules. Paragraph 3(c) of the Rules states that the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Paragraph 10(e) of the Rules requires UDRP panels to decide a request to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Previous UDRP panels have concluded that the consolidation of multiple domain name disputes involving multiple registrants may be appropriate where the particular circumstances indicate that common control is being exercised over the disputed domain names or the websites to which the domain names direct and it would be fair and equitable to all parties to consolidate the complaints (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281). Factors which may indicate common control include use of the same registry, websites with identical features (Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,
WIPO Case No. D2004-0659), the presence of a common administrative or technical contact (ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002,
WIPO Case No. D2000-0034; Caesars World, Inc. v. Starnet Communications and Atlantic West Gaming Entertainment, Ltd., WIPO Case No. D2002-0066), the fact that the registrants are located in the same country and similarity of the domain names involved (Confederation Nationale du Credit Mutuel v. Philippe Marie,
WIPO Case No. D2010-1513).
The Complainant has provided evidence that the disputed domain names are all registered through the abovementioned Registrar. The Complainant contends that common control of the disputed domain names is exercised by a company named “Gunlas Lastik” and provides evidence that both <e-michelin.com> and <michelin-lastikcim.com> provide a contact email address of “[email protected]”, whilst the Gunlas Lastik company is mentioned in the contact details of <michelin-online.com>. The Complainant sent cease and desist letters to the Respondents on April 2, 2012: whilst no replies were received from the registrants of <michelin-online.com> and <michelin-lastikcim.com>, a response was received from “[email protected]” in relation to <e-michelin.com> on May 9, 2012 stating that there was no violation and offering to sell the disputed domain name. The Complainant also states that the disputed domain names <michelin-online.com> and <michelin-lastikcim.com> direct to websites which are very similar, and that <michelin-online.com> and <e-michelin.com> were registered on the same date, March 19, 2011, whilst <michelin-lastikcim.com> was registered some two weeks earlier, on March 3, 2011. The registrants are all located in Turkey.
The Panel finds that the Complainant has established that it is more likely than not that the disputed domain names are subject to the common control of “Gunlas Lastik”. The Panel finds this common control is sufficient to justify consolidation of the Complainant’s claims against the Respondents in one proceeding. The Panel concludes that in the circumstances of the case it would be procedurally efficient and equitable to the parties to consolidate the proceedings, allowing multiple complaints to be dealt with in a single proceeding, and therefore accepts the Complainant’s request for consolidation.
4. Factual Background
The Complainant is a leading global manufacturer of tires under the trade mark MICHELIN and has marketing operations in over 170 countries. The MICHELIN brand has had a presence in Turkey through importation since as early as 1936 and has developed activities in Turkey since 1996. The Complainant also produces hotel, restaurant and map publications under the MICHELIN brand.
The Complainant owns trade mark registrations around the world including Turkey for the mark MICHELIN in relation to various goods and services. The Complainant’s registered rights in MICHELIN in Turkey date from at least 1968. The Complainant also operates, among others, the domain names <michelin.com> and <michelin.com.tr>.
The disputed domain names <e-michelin.com> and <michelin-online.com> were registered on March 19, 2011 and <michelin-lastikcim.com> on March 3, 2011. The Complainant asserts that the disputed domain names <michelin-online.com> and <michelin-lastikcim.com> direct to websites displaying links to websites offering the Complainant’s competitors’ tires and introducing the Complainant’s competitors’ trade marks. The disputed domain name <e-michelin.com> directs to an inactive website.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the disputed domain names are identical or confusingly similar to its registered trade marks MICHELIN because they incorporate the Complainant’s well-known mark in its entirety with the addition of the descriptive terms “e”, “online” and “lastik” (translated as “tire” in Turkish). The addition of the words “e”, “online” and “lastik” do not alter the phonetic, graphic, and conceptual identity of the Complainant’s trade mark with that of the disputed domain names.
The Complainant submits that the Respondents have no rights or legitimate interests in the disputed domain names, and that the disputed domain names are so identical to the famous MICHELIN trade mark of the Complainant that the Respondents cannot reasonably pretend they were intending to develop a legitimate activity through the disputed domain names.
The Complainant contends that the Respondents are not commonly known by the name “michelin”, in any way affiliated with the Complainant, nor authorized or licensed to use the MICHELIN trade mark or to seek registration of any domain name incorporating said mark.
The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant contends that the Respondents had the Complainant’s trade mark and company name in mind when registering the disputed domain names.
The Complainant requests that the disputed domain names be cancelled.
B. Respondent
The Respondents did not reply to the Complainant’s contentions, other than late-submitted correspondence from “Gunlas Lastik” with the Center offering to sell the disputed domain name <e-michelin.com> on January 11, 2013.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant provided evidence that it has prior registered rights in the mark MICHELIN in at least Europe and Turkey. From the evidence supplied, the Panel finds that MICHELIN is a well-known mark, at least in relation to tires and restaurant guides. Several other UDRP panels have made similar findings: Compagnie Générale des Etablissements Michelin v. Milan Kovac / Privacy--Protect.org, WIPO Case No. D2012-0634; Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev, WIPO Case No. D2012-0384; and Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy, WIPO Case No. D2012-0045.
The disputed domain names all incorporate the Complainant’s trade mark in its entirety. The generic terms “e”, “online” and “lastik”, which translates as “tire” in Turkish, are used within the disputed domain names. Previous UDRP panels have held that adding common terms to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain and the mark (Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd.,
WIPO Case No. D2005-0587).
Accordingly, the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Guidance regarding establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.
Three circumstances are identified that would establish rights or legitimate interests:
(i) bona fide prior use;
(ii) common association with the domain name; and
(iii) legitimate noncommercial use.
The Complainant has made a prima facie case that none of these circumstances applies. The Respondents did not exercise their right to respond substantively in these proceedings. Thus, the Respondents have failed to rebut the prima facie case made by the Complainant or advance any other argument supporting rights or legitimate interests.
Consequently, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides guidance regarding establishing bad faith.
Four non-exhaustive circumstances are identified where the respondent’s intention in registering a domain name may be evidence of bad faith. These intentions may be summarized as follows:
(i) to sell the domain name to the rights-holder at a profit;
(ii) to prevent the rights holder from registering a domain name;
(iii) to disrupt the business of a competitor; and
(iv) to divert Internet traffic for commercial gain.
Given the established well-known identity of the MICHELIN trade mark, the Panel finds that in all likelihood the Respondents would have been aware of the Complainant’s trade mark at the time the disputed domain names were registered. Previous UDRP panels have made a finding of bad faith where the complainant’s trade mark was shown to be well known or in wide use at the time of registration of the disputed domain name (SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
The disputed domain names <michelin-online.com> and <michelin-lastikcim.com> direct to websites displaying links to websites offering the Complainant’s competitors’ tires and displaying trade marks of the Complainant’s competitors. The Panel finds that this diverts Internet traffic from the Complainant’s websites, contrary to the Policy.
The disputed domain name <e-michelin.com> is currently inactive. Previous UDRP panels have found that passive holding of a disputed domain name does not prevent a finding of bad faith (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421) and that UDRP panels should consider all the circumstances of the Respondent’s behaviour in considering whether passive holding satisfies the requirements of paragraph 4(a)(iii). The registrant of <e-michelin.com> responded to the Complainant’s cease and desist letter on May 9, 2012 with an offer to sell said domain name. The offer to sell was also put to the Center in an email of January 11, 2013. Previous UDRP panels have made a finding that offers to sell the disputed domain name constituted evidence of bad faith (Research in Motion Limited v. Alon Banay, WIPO Case No. D2009-0151). Accordingly, the Panel concludes that there is evidence of bad faith on the part of the registrant of <e-michelin.com>.
Accordingly the Panel finds that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
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 <e-michelin.com>, <michelin-lastikcim.com> and <michelin-online.com> be cancelled.
David Stone
Sole Panelist
Date: January 28, 2013
