WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Mikhail J Nefedov

Case No. D2017-0174

1. The Parties

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

The Respondent is Mikhail J Nefedov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <nemichelin.com> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2017. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2017, 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 and stating that the language of the registration agreement for the disputed domain name is in Russian.

Pursuant to the Complaint submitted in English and the Registrar’s confirmation that Russian is the language of the registration agreement, on February 6, 2017, the Center requested Parties to submit their comments on the language of the proceeding. On February 6, 2017, the Complainant submitted its request for English to be the language of the proceeding, by reference to the Complaint. The Respondent did not submit any comment on the language of the proceeding.

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 the Respondent in English and Russian of the Complaint, and the proceedings commenced on February 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2017.

The Center appointed Assen Alexiev as the sole panelist in this matter on March 23, 2017. 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 leading tire company manufacturing and marketing tires for all types of vehicles. It also offers electronic mobility support services on the website at “www.viamichelin.com” and publishes travel guides, hotel and restaurant guides, maps and road atlases. The Complainant is present in more than 170 countries, has 112,300 employees and operates 68 production plants in 17 different countries.

The Complainant owns numerous trademark registrations for the sign MICHELIN around the world, including the following registrations (the “MICHELIN trademark”):

- The International trademark MICHELIN with registration No. 348615, registered on July 24, 1968, designating the Russian Federation and covering goods and services in International Classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;

- The International trademark MICHELIN with registration No. 452542, registered on May 8, 1980, designating the Russian Federation and covering services in International Classes 35 and 41;

- The International trademark MICHELIN with registration No. 457819, registered on December 1, 1980, duly renewed, designating the Russian Federation and covering goods and services in International Classes 9, 11, 14, 16, 20, 21, 24, 25, 26, 28 and 34;

- The International trademark MICHELIN with registration No. 492879, registered on May 10, 1985, designating the Russian Federation and covering goods in International Class 12; and

- The International trademark MICHELIN with registration No. 1,245,891, registered on December 10, 2014, designating the Russian Federation and covering services in International Classes 35, 36, 39, 40, 41, 44 and 45.

The Complainant operates the domain names <michelin.com>, registered on December 1, 1993, <michelin.org>, registered on March 9, 2000, and <michelin.ru>, registered on November 20, 1998.

The disputed domain name was registered on June 19, 2016. At the time of filing of the Complaint, the disputed domain name resolved to a registrar parking page.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical or confusingly similar to the MICHELIN trademark, which previous UDRP panels have considered to be well known or famous. The disputed domain name reproduces this trademark in its entirety, which is sufficient to make the disputed domain name identical or confusingly similar to the trademark. The disputed domain name also contains the letters “n” and “e”, but this does not prevent the likelihood of confusion.

The Complainant contends 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 register any domain name incorporating the MICHELIN trademark. The Respondent has no prior rights or legitimate interests in the disputed domain name, and the registration of the MICHELIN trademark preceded the registration of the disputed domain name for years. The Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name as it resolves to the default page of the Registrar. The Respondent never answered the Complainant’s cease and desist letters to it.

According to the Complainant, the disputed domain name was registered and is being used in bad faith. The Complainant and its MICHELIN trademark are well known throughout the world including the Russian Federation where the Respondent is located, making it unlikely that the Respondent was not aware of the Complainant and of the MICHELIN trademark. The disputed domain name entirely reproduces the MICHELIN trademark, which shows that the Respondent had this trademark and company name in mind when registering the disputed domain name, which suggests opportunistic bad faith. In the absence of any license or permission from the Complainant to use the MICHELIN trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. The likelihood of confusion between the disputed domain name and the MICHELIN trademark will inevitably result in the diversion of Internet traffic from the Complainant’s website to the Respondent’s website. The disputed domain name is currently inactive, which does not mean that it is being used in good faith. The passive holding does not preclude a finding of bad faith. In such case all surrounding circumstances of the Respondent’s behaviour have to be examined. A passive holding of a domain name may be considered as being made in bad faith where the Complainant’s trademark has a strong reputation, the Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name and has taken active steps to conceal its true identity by providing false contact details, in breach of its registration agreement. It is also likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name.

Before starting the present proceeding, the Complainant made efforts to resolve this matter amicably. On July 19, 2016, it sent a cease and desist letter to the Respondent and requested the Respondent to transfer the disputed domain name to the Complainant free of charge. The Respondent did not reply. As no amicable settlement could be achieved, the Complainant had to initiate the present proceeding against the Respondent in order to obtain the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Pursuant to the 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;

(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 the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(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 the 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.”

6.1. Language of the Proceeding

In respect of the language of the proceeding, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant has submitted its Complaint in the English language, and requests that the proceeding be held in English on the grounds of fairness and the expeditious resolution of the dispute. The Center has invited the Respondent, in both English and Russian, to state its position on the language of the proceeding, but the Respondent has not submitted any comments on this issue.

In view of the above, the Panel is prepared to accept that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account all relevant evidence that is available in this case in either Russian or English.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the MICHELIN trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” part of the disputed domain name.

Therefore, the relevant part of the disputed domain name that has to be examined is its “nemichelin” section. This section of the disputed domain name is confusingly similar to the distinctive MICHELIN trademark, as the only difference is the addition in the disputed domain name of the non-distinctive letters “ne”, which does not eliminate the confusing similarity.

Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the MICHELIN trademark, in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, 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 affiliated to the Complainant and is not authorized to use the MICHELIN trademark or to seek registration of any domain name incorporating this trademark. The Complainant has further pointed out that the registration of MICHELIN trademark predates the registration of the disputed domain name for years, and that the Respondent does not use the disputed domain name in connection to a bona fide offering of goods or services as it resolves to the website of the Registrar. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not taken any position on the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.

The disputed domain name incorporates the distinctive MICHELIN trademark entirely. The MICHELIN trademark has been registered in the Russian Federation, where the Respondent is located, for many years. The circumstances of this case lead the Panel to reach a conclusion that the Respondent is likely to have been well aware of the business of the Complainant and to have intended to exploit the popularity of the Complainant and of the MICHELIN trademark to attract the attention of Internet users when it chose to register the disputed domain name. In the Panel’s view, such conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondent. Therefore, the Panel finds that the Complainant’s prima facie case has not been rebutted, and that the Respondent does not have 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 online 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.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

The facts of this case show that the disputed domain name is likely to have been registered with knowledge of the reputation and goodwill of the Complainant and of its MICHELIN trademark, which at that point in time had been registered in the Russian Federation for many years. In this situation, the Respondent is likely to have registered the disputed domain name in view of its attractiveness to consumers, while at the same time not having obtained an authorization from the Complainant for the registration. This conclusion supports a finding that the Respondent has registered the disputed domain name in bad faith.

The disputed domain name does not resolve to an active website, other than a registrar parking page. However, in view of the distinctiveness and popularity of the MICHELIN trademark and the confusing similarity between it and the disputed domain name, it appears to the Panel that the Respondent cannot put the disputed domain name to any legitimate use. On the basis of all the above the Panel finds that the disputed domain name has been registered and is being used 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 <nemichelin.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: April 19, 2017