WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. HoangVu Luu

Case No. D2014-1016

1. The Parties

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

The Respondent is HoangVu Luu of Seoul, Republic of Korea.

2. The Disputed Domain Name and Registrar

The disputed domain name <michelinvietnam.com> (the “Domain Name”) is registered with DreamHost, LLC, United States (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2014. On June 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. After several attempts to contact the Registrar, the Center received emails from the Registrar dated July 3, 2014 and July 7, 2014 requesting for the attachment of the Complaint but concerningly without providing any verification of information regarding the Domain Name.

The WhoIs of July 11, 2014 showed that the Domain Name was registered with the Registrar, and that the Respondent was the current registrant of the Domain Name. The Center proceeded on the basis that the appropriate steps would have been taken by the Registrar to prevent registrant breach of paragraph 8(a) of the Policy. Moreover, the Center proceeded in this case on the basis that, for the adjudication of disputes concerning or arising from use of the Domain Name, the Domain Name registrant had submitted in its Registration Agreement (“RA”) to the jurisdiction of the courts where the Registrar is located.

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, the Registrar of the Complaint, and the proceedings commenced on July 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2014.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on August 8, 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 a renowned corporation in the automotive industry and in French gastronomy, which has marketing operations in more than 170 countries and employs 113,400 employees. The Complainant is present all around the world including in the Asian region where it has 9 plants and around 15,300 employees. In the Republic of Korea, the Complainant has a local affiliate and a dedicated website “www.michelin.co.kr”. Vietnam Michelin Group was established in 1987; in Viet Nam, it operates production plants, a mold factory and a factory with more than 6,700 rounds of steel workers.

The Complainant is the owner of the trademark MICHELIN, which is protected around the world, in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and map publications. In the Republic of Korea, the trademark MICHELIN is protected under, inter alia, International Registration No. 1049371 dated August 25, 2010. In Viet Nam, the trademark is protected under, inter alia, eight (8) International Registrations Nos. 348615 dated July 24, 1968, 416579 dated June 25, 1975, 452542 dated May 8, 1980, 457819 dated December 1, 1980, 492879 dated May 10, 1985, 517586 dated September 25, 1987, 574577 dated May 6, 1991, 771031 dated June 11, 2001.

The Complainant owns and operates a website under the domain name <michelin.com> for promoting its services and products.

The Domain Name <michelinvietnam.com> was registered with the Registrar on February 22, 2013.

The Complainant sent a cease and desist letter to the Respondent on January 8, 2014. The Respondent did not reply despite several reminders.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant asserts that it owns numerous MICHELIN trademark registrations around the world and that its MICHELIN trademarks enjoy a worldwide reputation. In particular, the Complainant is the owner of International Trademark No. 348615 dated July 24, 1968 for MICHELIN in Classes 1, 6, 7, 8, 9, 12, 16, 17 and 20.

In addition, the Complainant states that the Complainant and its affiliates operate websites under the domain names <michelin.com> registered on December 1, 1993, and <michelin.com.kr> registered on January 29, 2000, in order to promote its services.

The Complainant argues that the Domain Name reproduces the Complainant’s trademark in its entirety, which previous UDRP panels have considered to be “well-known” or “famous” in many WIPO UDRP decisions.

The Complainant further contends that the addition of the geographical term “vietnam” may further enhance the likelihood of confusion since the Complainant is active in this country. This might lead Internet users into believing that the Domain Name <michelinvietnam.com> is in some way linked to the Complainant in this particular geographical location.

Finally, the Complainant asserts that the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the Domain Name. As such, the Complainant contends that the Domain Name is identical or confusingly similar to the trademark MICHELIN in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant argues that the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating this mark. Furthermore, the registration of the MICHELIN trademarks preceded the registration of the Domain Name by years. Additionally, the Domain Name is so identical to the Complainant’s famous MICHELIN trademark that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Domain Name.

The Complainant also contends that the Respondent is not commonly known by the name “michelin”, in any way affiliated with Complainant, nor authorized or licensed to use the MICHELIN trademark or to seek registration of any domain name incorporating this mark.

The Complainant further contends that the Domain Name resolves to an inactive page, which can lead to the inference that the Respondent has not made any reasonable and demonstrable preparations to use the Domain Name. Consequently, the Respondent failed to show any intention of fair use of the Domain Name.

According to an online dictionary, the term “michelin” has no meaning in English. The only results found are those concerning the Complainant. Hence, the Respondent has taken undue advantage of the Complainant’s trademark MICHELIN by registering the Domain Name.

Finally, the Complainant alleges that the Respondent neither tried to demonstrate the reason of a domain name identical to the Complainant’s trademarks and domain names, nor answered the Complainant’s cease-and-desist letter.

Thus, the Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name.

(iii) The Domain Name was registered and is being used in bad faith

Registration in bad faith:

The Complainant argues that with the worldwide well-known status of its MICHELIN trademarks, and because the Domain Name reproduces entirely the Complainant’s trademark MICHELIN, it is implausible that the Respondent was unaware of the Complainant’s trademark MICHELIN at the time of registration and that opportunistic bad faith can be inferred in this case.

The Complainant contends that the Respondent has not replied to the cease-and-desist letter or to the reminders sent by the Complainant, which could be considered an indication of bad faith, as has been found by previous Panels.

The Complainant further contends that a quick MICHELIN trademark or Google search would have revealed to the Respondent the existence of the Complainant and its trademark. With the advancement of the Internet and information technology, which helps the reputation of brands and trademarks transcend national borders, it is highly unlikely that the Respondent was unaware of the existence of the Complainant and its well-known reputation and trademarks when it registered the Domain Name.

Use in bad faith:

The Complainant contends that the Domain Name is currently inactive and that the Respondent is passively holding the Domain Name.

The Complainant also argues that the Respondent’s passive holding of the Domain Name satisfies the requirement that the Domain Name be used in bad faith by the Respondent as: (i) the Complainant and its trademark MICHELIN have a strong reputation and are widely known throughout the world; (ii) in view of the notoriety of the Complainant, no possible use in good faith is conceivable; (iii) the Respondent has not provided any evidence of actual or contemplated use in good faith of the Domain Name; (iv) the Respondent never replied to the Complainant’s cease-and-desist letter; (v) it is likely that the Respondent registered the Domain Name to prevent the Complainant from using its trademarks in the Domain Name.

As a consequence, the Complainant asserts that the Domain Name was registered and is being used in bad faith by the Respondent.

B. Respondent

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

6. Discussion and Findings

A. Procedural issues

(i) Lack of Registrar verification

Despite repeated attempts by the Center to contact the Registrar in this case to ascertain whether the contact information was correct, to insure that the Domain Name registration had been locked (such obligation deriving implicitly from the prohibition on registrant transfer of a domain name registration during a pending UDRP proceeding under paragraph 8(a) of the UDRP), and to confirm (or otherwise) the jurisdiction to which the Domain Name registrant had submitted in its Registration Agreement, the Registrar failed to make such a verification.

Therefore, the Panel proceeds with issuing its decision in this case on the assumption that the information gathered from the Complaint and the public WhoIs database is correct.

(ii) The Respondent’s failure to respond

The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether:

(i) the Domain Name registered by the Respondent 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 respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and (2) that the Domain Name is identical or confusingly similar to its trademark.

First, the Panel finds that the Complainant has clearly evidenced that it has trademark rights in the trademark MICHELIN, which was registered well before the Domain Name. Also, the Complainant has sufficiently demonstrated and evidenced that it has long used its trademark for its commercial activities, and in particular to offer tires and other products in the automobile and/or gastronomy industry worldwide.

Second, the Panel finds that the Domain Name comprises the Complainant’s distinctive and well-known MICHELIN mark in which the Complainant has exclusive rights. The difference between the Domain Name and the trademark is the addition of the suffix “vietnam”, which indicates a name in English of a country, Viet Nam. The Panel finds that MICHELIN remains the dominant element in the Domain Name. Thus, in the Panel’s view, the addition of a geographical indicator as a suffix does nothing to distinguish the Domain Name from the trademark, nor to dispel the risk of confusing similarity, as has been found in previous UDRP decisions (see, e.g., Playboy Enterprises International Inc. v. Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale,WIPO Case No. D2005-0755; Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768).

Third, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (gTLD) “.com” to the Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

On the basis of the foregoing findings, the Panel finds that the Domain Name is confusingly similar to the Complainant’s MICHELIN trademark, and the first element under paragraph 4(a)(i) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that the Complainant has presented sufficient evidence that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in the trademark MICHELIN.

The Complainant contends that the Domain Name resolves to an inactive website. However, as of the date of this decision, by accessing the website under the Domain Name, the Panel finds a forum page under the name “XenForo”. The forum page is deemed active but with only one member. The forum page bears no posts, but just an HTML link placed in the center of its home page. This HTML link is directed to a parking page with Pay-Per-Click (“PPC”) links that redirect Internet users to other online locations. With such facts, the Panel finds that the purpose of the Domain Name is not to operate an online forum, but to direct Internet users to the PPC advertising website and to collect click-through revenue from advertising links. Such use demonstrates that the Respondent has used the Domain Name to derive a commercial benefit.

In this regard, paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that “use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder [emphasis in the original]”.

In the present case, the Panel finds that the PPC links are related to neither services nor products of the Complainant. However, taking into account the facts that MICHELIN is a well-known mark that the Respondent has no right or connection to, and that MICHELIN is neither descriptive nor generic of any products or services under the PPC links, the Panel finds the Respondent incorporated the renowned trademark MICHELIN into the Domain Name to free-ride on the fame of the trademark MICHELIN in a bid to misleadingly divert Internet users to the website to which the Domain Name resolves, for the purpose of attracting more traffic to the PPC links for commercial gain. Such use can be considered neither a bona fide use, nor a fair or noncommercial use.

Further, the Panel finds that the Respondent is not mentioned anywhere on the website to which the Domain Name resolves. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the Domain Name. Therefore, the Panel finds that the Respondent has not been commonly known by the Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 web site or location or of a product or service on your web site or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel further finds that the Complainant’s trademark MICHELIN has been registered on a worldwide basis, and enjoys a significant reputation. The Complainant’s MICHELIN trademark has been in use in, among others places, both the Republic of Korea where the Respondent resides, and Viet Nam, a geographical term for which is added to the Domain Name.

The Complainant also owns and operates the website under the domain name <michelin.com>, to which the Domain Name is identical, except the addition of the geographical term “vietnam”. Both the Complainant’s trademark MICHELIN, which was first registered in 1968, and domain name <michelin.com>, which was registered in 1993, well-predate the registration of the Domain Name. MICHELIN, which is a coined word, without any dictionary meaning, is neither descriptive nor generic in respect of any products or services.

These facts show that the Respondent did not register the Domain Name in a fortuity. The Respondent knew or should have known of the Complainant and the Complainant’s trademark MICHELIN and domain name <michelin.com> before its registration of the Domain Name, and the Panel considers the registration an attempt by the Respondent to take advantage of the Complainant’s goodwill.

Further, as discussed earlier, the Respondent is using the Complainant’s well-known trademark MICHELIN in its entirety as the uniquely distinctive element in the Domain Name. The Domain Name resolves to an active forum page, but with no posts other than an HTML link to a PPC parking site, which is placed in the center of the home page.

With such facts, the Panel finds that the Respondent is using the Domain Name to intentionally attempt to attract Internet users to its website, and then to the PPC parking site, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website, for commercial gain. Numerous UDRP panels have held that a respondent who intentionally diverts Internet users to its website or PPC links through a likelihood of confusion with a complainant’s mark is acting in bad faith.

Taking into account all of the above, the Panel finds that the Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv), and the third element under paragraph 4(a)(iii) of the Policy is established.

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 Domain Name <michelinvietnam.com> be cancelled.

Pham Nghiem Xuan Bac
Sole Panelist
Date: August 20, 2014