WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Bann Auto Parts / michelin stickers

Case No. D2014-0635

1. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.

The Respondent is Bann Auto Parts / michelin stickers of Bangkok, Thailand.

2. The Domain Name and Registrar

The disputed domain name <michelinstickers.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 16, 2014. On April 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2014, the Registrar 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 May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2014.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 4, 2014. 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 one of the largest tire manufacturing companies in the world. Its affiliate Michelin Siam Group was established in 1987, and is a leading manufacturer and distributor of tire products in Thailand, employing more than 6,700 workers.

The Complainant owns the following trademark registrations for MICHELIN (the “MICHELIN trademark”):

- the word trademark MICHELIN, registered in Thailand with registration No.136710, registered on August 21, 1989, covering goods in International class 6;

- the word trademark MICHELIN, registered in Thailand with registration No.119419, registered on December 29, 1987, covering goods in International class 39; and

- the word trademark MICHELIN, a Community trademark with registration No.004836359, registered on March 13, 2008, covering goods and services in classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34 and 39.

The Complainant operates the domain names <michelin.com> and <michelin.co.th>.

The disputed domain name was registered on July 20, 2013.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the disputed domain name is identical or confusingly similar to the MICHELIN trademark. The disputed domain name entirely reproduces this trademark, and its combination with the generic term “stickers” does not reduce the risk of confusion with the MICHELIN trademark. Thus, the public may be confused that the disputed domain name is owned by or related to the Complainant.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated to the Complainant and has not been authorized by the Complainant to use and register the MICHELIN trademark or to seek registration of any domain name incorporating the same trademark. The registration of the MICHELIN trademark preceded the registration of the disputed domain name for years. The disputed domain name resolves to a webpage that invites Internet users to select a menu item and then directs them to the website at “www.motoracingstickers.com”, an online shop selling stickers. The Complainant attempted to contact the Respondent by sending a cease-and-desist letter. The Respondent never replied, but changed the name of the registrant of the disputed domain name to “michelin stickers” to match the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the Complainant when it registered the disputed domain name. The Complainant is well known throughout the world, and the Respondent’s use of the well-known MICHELIN trademark suggests opportunistic bad faith. The Respondent has used the disputed domain name to redirect Internet users to an online shop selling stickers. The use of a domain name reproducing or imitating the trademark of a third party to direct Internet users to one’s own website is not a good faith use under the Policy. The bad faith of the Respondent is also evident from its attempt to create a false legitimate interest in the disputed domain name by changing registrant’s name and email contact after the receipt of Complainant’s cease-and-desist letter.

The Complainant requests the cancellation of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

According to Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” Also, as stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent likely has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided information about the registrations of the MICHELIN trademark and has thus established its rights in this trademark.

It is a common practice under the Policy to disregard, in appropriate circumstances, the generic Top-Level Domains (“gTLD”) such as the “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name here is its “michelinstickers” section. This section appears as a combination of two separate elements - “michelin” and “stickers”. The first element is identical to the Complainant’s well known MICHELIN trademark, while the second element is a generic word. In the Panel’s view, this combination of elements does not distinguish the disputed domain name from the MICHELIN trademark. Rather, it makes it likely that Internet users would associate the disputed domain name with the Complainant and its MICHELIN products and would have the impression that the disputed domain name is related to the Complainant.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the MICHELIN trademark in which the Complainant has rights, and that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a case, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the name “Michelin” and is not affiliated with the Complainant, that it was not authorized or licensed to use the MICHELIN trademark or to register a domain name incorporating the same trademark. The Complainant also asserts that it has not authorized the Respondent to develop a commercial website at the disputed domain name claiming to have an affiliation to the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent, although given a fair opportunity to do so, chose not to present to the Panel any response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reason for the registration and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor.

Apart from the factual contentions of the Complainant, the only other sources of information about the Respondent is the WhoIs information, provided by the Registrar, and the content of the website at the disputed domain name. As contended by the Complainant, the WhoIs information for the disputed domain name initially did not show a connection between the name of the Respondent and the disputed domain name. After the Respondent received a cease-and-desist letter from the Complainant, the WhoIs information was changed to reflect that the current registrant of the disputed domain name is “michelin stickers”. In this situation, the Panel is prepared to accept the Complainant’s contention that the change of the registrant details was deliberately made to create an appearance of a link between the name of the Respondent and the disputed domain name. Such conduct cannot be regarded as evidence of rights or legitimate interests of the Respondent in the disputed domain name.

The disputed domain name is confusingly similar to the MICHELIN trademark of the Complainant, which was registered long before the registration of the disputed domain name. As contended by the Complainant and undisputed by the Respondent, the Respondent uses the disputed domain name to redirect Internet users to a website where stickers are offered for sale. The Panel is satisfied that in this situation it is more likely than not that Internet users may be led to wrongly believe that the sticker selling website is an official website of the Complainant or is endorsed by it.

In the Panel’s view, these circumstances show that the Respondent must have been well aware of the Complainant and of its MICHELIN trademark when the disputed domain name was registered, and its registration and use was made without the consent of the Complainant in an attempt to benefit from the reputation of the MICHELIN trademark and products. The Panel is of the opinion that the Respondent’s conduct cannot give rise to rights and legitimate interests in the disputed domain name, and finds that the Complainant’s prima facie case has not been rebutted. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location.”

As discussed above in relation the issue of rights and legitimate interests, the Respondent must have been aware of the Complainant’s MICHELIN trademark at the time of the registration of the disputed domain name, which is confusingly similar to this trademark. The Respondent has also attempted to create an appearance of rights or legitimate interests in the disputed domain name by changing the registrant details after the receipt of the Complainant’s cease-and-desist letter. In the Panel’s view, these circumstances support a finding that the Respondent has registered the disputed domain name in bad faith. The Respondent has not denied that the disputed domain name is linked to a commercial website that offers products that do not originate from the Complainant. In the absence of any evidence or allegation to the contrary, these circumstances satisfy the Panel that the Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain Internet users to a commercial website by creating a likelihood of confusion with the Complainant’s MICHELIN trademark as to the source, sponsorship, affiliation, or endorsement of the same website and of the goods offered on it. This conduct of the Respondent supports a finding of bad faith use of the disputed domain name under Policy, paragraph 4(b)(iv).

Therefore, the Panel finds that the Respondent has registered and used 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 <michelinstickers.com> be cancelled.

Assen Alexiev
Sole Panelist
Date: June 23, 2014