WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua

Case No. D2016-1999

1. The Parties

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

Respondent is Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua of Kyiv, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <tyres.plus> 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 October 3, 2016. On October 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 14, 2016. On October 21, 2016 the privacy shield confirmed that it had “forwarded all the information about proceeding the UDRP case regarding the domain name to [its] client”. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 4, 2016.

The Center appointed Roberto Bianchi as the sole panelist in this matter on November 18, 2016. 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

Michelin, with headquarters in Clermont-Ferrand, France, owns Tyreplus, an authorized dealer of Michelin tires, related products and automotive services. Tyreplus has 1600 franchisees in 26 countries, including Ukraine.

Complainant owns numerous TYREPLUS trademark registrations around the world, inter alia,

- International trademark TYREPLUS, Registration No. 925317, Registration date March 16, 2007, covering goods and services in International Classes 12, 16, 35, 37, 41 and 42, and

- International trademark TYREPLUS, Registration No. 925322, Registration date March 16, 2007, covering goods and services in International Classes 12, 16, 35, 37, 41 and 42.

Michelin promotes its products and services through the websites “www.michelin.ua” and “www.tyreplus.com.ua”, dedicated to the Ukrainian market.

The disputed domain name was registered on February 9, 2016,

On June 27, 2016, Complainant sent a cease-and-desist letter to Respondent, without obtaining any reply.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is identical or at least confusingly similar to Complainant’s trademark TYREPLUS. The disputed domain name imitates the trademark TYREPLUS, which previous panels have considered to be “well-known” or “famous”. The disputed domain name differs from Complainant’s TYREPLUS trademark only by the addition of a punctuation mark “.” between the terms “tyres” and “plus” in the mark and the letter “s” in “tyre”. While “.plus” is the TLD, the TLD used may be considered in certain circumstances when the applicable suffix “may itself form part of the relevant trademark” as provided by the WIPO Overview 2.0paragraph 1.2. The addition of the letter “s” does not significantly affect the appearance or pronunciation of the disputed domain name. This practice is “typosquatting” and creates virtually confusingly similar marks to Complainant’s trademark.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not affiliated with Complainant in any way nor has he been authorized by Complainant to use and register their trademarks, or to seek registration of any domain name incorporating said mark. Furthermore, Respondent has no prior rights or legitimate interest in the disputed domain name. The registration of the TYREPLUS trademark preceded the registration of the disputed domain name for years. Moreover, the disputed domain name is so similar to the famous TYREPLUS trademark of Complainant, that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. Besides, the disputed domain name resolves to an inactive page. Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. Consequently, Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. It is most likely to be believed that Respondent has no rights or legitimate interests in the disputed domain name.

Additionally, Respondent never answered to Complainant’s cease-and-desist letter despite Complainant’s reminders. Panels have repeatedly stated that when respondents do not avail themselves of their rights to respond to complainants, it can be assumed that they have no rights or legitimate interest in the domain names.

Moreover, it seems that Respondent registered the disputed domain name with a privacy shield service to hide his identity and prevent Complainant from contacting him. Thus, such a behavior highlights the fact that Respondent has no rights or legitimate interests in respect of the disputed domain name.

The disputed domain name was registered and is being used in bad faith.

1) Registration in bad faith

It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name. Bad faith can be found where respondent “knew or should have known” of Complainant’s trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interest (Research InMotion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

Firstly, Complainant is well-known throughout the world including Ukraine – the apparent or possible home country of Respondent. Secondly, several Panels have previously mentioned its worldwide reputation, making it unlikely that Respondent was not aware of Complainant’s proprietary rights in the trademark. Thirdly, as the composition of the disputed domain name imitates Complainant’s trademark TYREPLUS, it is impossible that Respondent did not have this trademark and company name in mind while registering the disputed domain name.

In fact, bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. Given the reputation of the TYREPLUS trademark, registration in bad faith can be inferred. Under paragraph 2 of the Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. This means that it was the registrant’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain name (Compagnie Gervais Danone contreGueorgui Dimitrov / NETART, WIPO Case No. D2009-0901; Carolina Herrera, Ltd. v.Alberto Rincon Garcia,WIPO Case No. D2002-0806; Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397). A quick search for the TYREPLUS trademark would have revealed the existence of Complainant and its trademark. Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums etBeauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226).

Taking into account the worldwide reputation of Complainant and its trademarks, as well as the high level of notoriety of Complainant, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademarks at the time of registration of the disputed domain name. In light of the reputation of Complainant’s TYREPLUS trademark, it is implausible that Respondent was unaware that Complainant owns trademark rights in the TYREPLUS trademark. Previous Panels have established that knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration.

Equally, registering a domain name which is confusingly similar to the trademark TYREPLUS since the addition of the letter “s” in the term “tyres” is a form of typosquatting, is in itself evidence of bad faith. Furthermore, Respondent registered the disputed domain name through a privacy shield service to hide his identity and contact details, thus, preventing Complainant from contacting him. Prior panels confirmed that a deliberate concealment of identity and contact information may in itself indicate registration in bad faith. Respondent neither tried to defend his rights nor stated any valid arguments to justify the registration of the domain name in response to Complainant’s cease-and-desist letter.

2) Use in bad faith

Previous Panels have considered that in the absence of any license or permission from Complainant to use such widely known trademark, no actual or contemplated bonafide or legitimate use of the domain name could reasonably be claimed (Alstom, Bouygues v. Webmaster; WIPO Case No. D2008-0281; Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055). The disputed domain name is currently inactive, which does not mean that the domain name is used in good faith. Indeed, passive holding does not preclude a finding of bad faith. Previous Panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the Panel must give close attention to all the circumstances of Respondent’s behavior (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Similarly, reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith. Furthermore, it is likely that Respondent registered the domain name to prevent Complainant from using its trademark in the disputed domain name. According to former panels, this type of conduct constitutes evidence of Respondent’s bad faith. Moreover, Respondent has not replied to any cease-and-desist letters and reminders Complainant sent. Such behavior has already been considered as an inference of bad faith by previous panels.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the TYREPLUS trademark. See section 4 above.

The Panel notes that in the disputed domain name the “tyre” element is incorporated with the addition of an “s” and the generic Top-Level Domain (gTLD) “.plus”. The addition in the disputed domain name of an “s” to the “tyre” element does not alter the impression of similarity. See France Billet v. Privacy Administrator, Anonymize, Inc., WIPO Case No. D2015-1641 (“The disputed domain name differs from this mark only by the addition of an “s” which does not distinguish the disputed domain name from the Complainant’s mark”). In the Panel’s view, the resulting domain name, i.e., where the gTLG is semantically, aurally and graphically perceived as a part of a compound, is confusingly similar to Complainant’s TYREPLUS mark. Nothing precludes a panel to consider the gTLD when assessing identity or confusing similarity. See Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (“The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach”); see also YPF S.A. v. Tomás Eduardo Fernández Iramain, WIPO Case No. D2014-1570, where the panelist considered the gTLD “.club” in finding that confusing similarity existed between the <servi.club> domain name and the complainant’s SERVI CLUB mark.

The Panel concludes that the disputed domain name is confusingly similar to Complainant’s TYREPLUS mark.

B. Rights or Legitimate Interests

Complainant contends that Respondent is not affiliated with Complainant in any way nor has he been authorized by Complainant to use and register the TYREPLUS mark, or to seek registration of any domain name incorporating said mark. Complainant states that Respondent has no prior rights or legitimate interests in the disputed domain name. In fact, the registration of the TYREPLUS mark preceded the registration of the disputed domain name by several years. Moreover, the disputed domain name is so similar to the famous TYREPLUS trademark, that Respondent cannot reasonably argue he was intending to develop a legitimate activity through the disputed domain name. Further, the disputed domain name resolves to an inactive page, and Respondent has not made any reasonable and demonstrable preparations to use it. Lastly, Respondent registered the disputed domain name with a privacy shield service to hide his identity and prevent Complainant from contacting him. This highlights the fact that Respondent has no rights or legitimate interests in respect of the disputed domain name.

In the Panel`s opinion, the existing evidence supports Complainant’s contentions. First, there is no evidence that Respondent is affiliated with Complainant. Second, there is no evidence that Respondent has registered the disputed domain name as a mark in Ukraine or elsewhere. Third, it appears that since the registration of the disputed domain name, on February 9, 2016, Respondent did not use the disputed domain name in any relevant way. In fact, on December 1, 2016 the Panel connected its browser to the website at the disputed domain name, “www.tyres.plus”, obtaining, as only result, a tombstone that reads, “Welcome to the home of tyres.plus. To change this page, upload your website into the public html directory. Date Created: Wed Feb 10 01:40:33 2016”. In the opinion of the Panel, the lack of any use of the disputed domain name, or of any demonstrable preparation to use it in the future, excludes the application of Policy paragraphs 4(c)(i) and 4(c)(iii). Fourth, the Respondent of record is “Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua”, which inclines the Panel also to discard the application of Policy paragraph 4(c)(ii).

Moreover, Respondent did not reply to Complainant’s cease-and-desist letter and until presently, it failed to provide any evidence or argument in its own favor.

Considering all of the above, the Panel concludes that Respondent has made out its case that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant has shown that it had registered the TYREPLUS mark several years before the registration of the disputed domain name. See section 4 above. Complainant also has shown that its TYREPLUS mark is well-known in various countries. See Compagnie Générale des Etablissements Michelin v. Private Registration / Nigel Chynoweth, WIPO Case No. D2013-1167 (“The complainant’s [TYREPLUS] trademark had a strong reputation and was widely known, as evidenced by its substantial use in Australia and in other countries”). Further, Complainant owns and operates the “www.tyreplus.com” website, to promote its Tyreplus chain of tire dealers in numerous countries, including Ukraine, Respondent’s country of domicile. The Panel notes that according to the corresponding WhoIs record, Complainant owns the <tyreplus.com> domain name since April 15, 2003. This means that even the most basic search on the Internet would have revealed that the TYREPLUS mark and the Tyreplus chain of authorized dealers predated the registration of the disputed domain name by nearly a decade. The Panel concludes that Respondent knew of, and targeted, Complainant, its Tyreplus chain of tire dealers and the TYREPLUS mark when it registered the disputed domain name. In the circumstances of this case, this indicates registration in bad faith.

As seen above, the disputed domain name does not appear ever to have been used until presently, aside from the posting of a less than eloquent tombstone since February 10, 2016. See section 6.B. above. In other words, for all practical purposes the disputed domain name is inactive. This does not mean, however, that it is not being used in bad faith. As stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, “[T]he concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” The Panel believes that the following circumstances indicate bad faith:

a) The registration of Complainant’s mark predates the registration of the disputed domain name by almost a decade;

b) Complainant’s mark is well-known in the field of tires dealers in numerous countries, including in Ukraine;

c) Respondent’s choice of a domain name slightly modifying Complainant’s mark suggests typosquatting;

d) Respondent never used the disputed domain name;

e) Given the renown of Complainant’s TYREPLUS mark, it is difficult to imagine any use of the disputed domain name that would not be illegitimate;

f) Respondent failed to reply to Complainant’s cease-and-desist letter, and to provide any explanation for its choice of the disputed domain name. It also failed to reply to any of Complainant’s contentions in this proceeding.

In conclusion, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The third requirement of the paragraph 4(a) of the Policy is also met.

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, <tyres.plus>, be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: December 1, 2016