WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Domains By Proxy, Registration Private, DomainsByProxy.com, Danielle Loh

Case No. D2017-0938

1. The Parties

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

The Respondent is Domains By Proxy, Registration Private, DomainsByProxy.com of Scottsdale, Arizona, United States of America / Danielle Loh of Singapore, Singapore, self-Represented.

2. The Domain Name and Registrar

The disputed domain name <ladymichelin.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2017. On May 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 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.

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 of the Complaint, and the proceedings commenced on May 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2017. The Response was filed with the Center on June 2, 2017.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 16, 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 Compagnie Générale des Etablissements Michelin, a French company whose main activity revolves around manufacturing and marketing tires for vehicles.

The Complainant is the owner of, among others, the following trademark registrations:

The Complainant also owns the following domain names:

The Respondent registered the disputed domain name <ladymichelin.com> on June 8, 2016.

5. Parties’ Contentions

A. Complainant

The Complainant argues the following:

I) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

That the disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN, as it replicates said trademark in its entirety.

That the inclusion of a well-known trademark in a disputed domain name may be sufficient to establish that it is identical or confusingly similar to the referenced trademark.

That the addition of generic term “lady” to the Complainant’s trademark does not influence the study of confusing similarity between the trademark and the disputed domain name.

That the generic Top-Level Domain (“gTLD”) “.com” should not be taken into consideration when examining the identity or confusing similarity between a trademark and a disputed domain name.

That by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant’s trademark.

That the Complainant has used the trademark MICHELIN in connection with a variety of goods and services around the world. That the public would assume that the disputed domain name belongs to the Complainant, or assume the existence of some kind of relationship between the disputed domain name and the Complainant.

II) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

That the Respondent is in no way affiliated to the Complainant, and that she has not been authorized by the Complainant to use or register a domain name incorporating its trademark.

That the trademark registrations owned by the Complainant for MICHELIN precede the registration of the disputed domain name by years.

That in the absence of a license or authorization to use a well-known trademark, there could be no finding of a contemplated legitimate use of the disputed domain name.

That due to the confusing similarity between the MICHELIN trademark and the disputed domain name, the Respondent cannot reasonably argue that she was intending to use the disputed domain name to develop a legitimate activity.

That the website to which the disputed domain name resolves displays a message, which states “website coming soon!” That this does not constitute an active use of the disputed domain name.

That the Complainant notified the Respondent with a Cease and Desist letter, which has not been answered despite the Complainant’s reminders.

That the Respondent used a privacy service to shield her identity and prevent the Complainant from contacting her.

III) The disputed domain name has been registered and is being used in bad faith.

That it is implausible that the Respondent was unaware of the Complainant when she registered the disputed domain name.

That the Complainant is well-known throughout the world, including Singapore, the home country of the Respondent.

That previous UDRP panelists have recognized MICHELIN’s worldwide reputation.

That the Respondent knew of the Complainant’s trademark MICHELIN at the time of registration of the disputed domain name.

That the website to which the disputed domain name resolves is inactive. That passive holding of a domain name does not serve to avoid a finding of bad faith use.

That the inclusion of a well-known trademarks in a domain name cannot be regarded as a legitimate use.

B. Respondent

The Respondent argues the following:

That the Complainant is mainly engaged in the manufacturing and distribution of tires and lifestyle products.

That the disputed domain name was set up as a personal blog about the Respondent.

That the content of the website to which the disputed domain name resolves is different from the graphic elements used by the Complainant. That the website uses different fonts, colors and a different logo those incorporated in the Complainant’s trademark.

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:

(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 disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of trademark registrations for MICHELIN in several jurisdictions, including Singapore, where the Respondent has declared to have her domicile.

The disputed domain name <ladymichelin.com> is confusingly similar to the Complainant’s trademark MICHELIN, as it replicates said trademark in its entirety.

The addition of the generic term “lady” to the disputed domain name does not constitute a decisive element to avoid confusing similarity between the disputed domain name and the MICHELIN trademark (see eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307; Time Warner Entertainment Company, L.P. v. HarperStephens, WIPO Case No. D2000-1254; and Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923).

The addition of the gTLD “.com” in this case is immaterial for purposes of assessing confusing similarity. For this reason, the Panel will not take into account the gTLD “.com” (see Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541).

The first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights to or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is 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 Complainant asserts that its MICHELIN trademark is well-known around the world. This Panel finds such assertion to be true, based on the Complainant’s longstanding trademark registrations around the world and the trademark’s renown, similarly recognized by previous UDRP panels (see Compagnie Générale des Etablissements Michelin v. Ozan Ertekin, Necati Ergin, Zeynep Elif, WIPO Case No. D2012-2482; Compagnie Générale des Etablissements Michelin, Manufacture Française des Pneumatiques Michelin v. Guy Buchet, WIPO Case No. D2016-0806; and Compagnie Générale des Etablissements Michelin v. Shen Zhong Chao, WIPO Case No. D2016-0408).

The Respondent claims that the disputed domain name was registered with the purpose of setting up a personal blog about herself. However, the Respondent did not provide any evidence that could demonstrate that she has indeed made preparations to set up said blog. Mere assertions are insufficient in demonstrating preparations to use a disputed domain name in connection to a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name (see Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000; and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).

Moreover, according to the Complainant’s assertions, which were not rebutted by the Respondent, the latter was served with a Cease & Desist letter prior to the commencement of this procedure.

The Respondent has not provided any argument or evidence to explain the reasons behind the inclusion of the trademark MICHELIN in the disputed domain name <ladymichelin.com>. The Respondent has not submitted any evidence showing that her name is in any manner related to the trademark MICHELIN, nor has she proven to have been commonly known as MICHELIN or <ladymichelin.com>.

The Respondent also argues that the website to which the disputed domain name resolves uses fonts, colors and a logo, which are different from those used by the Complainant. According to the evidence submitted by the Complainant, and an inspection of the website to which the disputed domain name resolves conducted by this Panelist, said website consists of a single page which displays the statement “website coming soon!”. In the absence of actual evidence supporting the Respondent’s assertions, the Respondent’s allegations alone do not prove rights to or legitimate interests in the disputed domain name.

This Panel considers that the Complainant has established a prima facie case that the Respondent has no rights to, or legitimate interests in the disputed domain name. This shifts the burden of production to the Respondent (see Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467; Cellular One Group v. COI Cellular One, Inc., WIPO Case No. D2000-1521; and Skipton Building Society v. skiptonassetmanagement.com, Private Registration, WIPO Case No. D2011-0222).

The Respondent has failed to prove her allegations concerning her supposed intentions to use the disputed domain name in connection to a blog.

Since the Respondent has submitted no evidence to prove a legitimate use of the disputed domain name, the second element of the Policy has been fulfilled (see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408).

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

A finding of bad faith may be made when the Respondent knew or should have known of the registration and use of the Complainant’s trademark prior to registering the disputed domain name (see Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524; and Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320).

The Complainant contends that it is implausible to think that the Respondent was unaware of the Complainant or its trademark at the time of registration of the disputed domain name.

Far from denying having prior knowledge of the trademark, the Respondent’s communication comprised in the docket contains an accurate description made by the Respondent, related to the Complainant’s main business. Moreover, the Respondent has not submitted any proof or logical argument that could shed light over the reason behind the inclusion of the trademark MICHELIN in the disputed domain name. Furthermore, MICHELIN is a well-known trademark over which the Complainant has rights, and holds trademark registrations around the world, including Singapore where the Respondent appears to be domiciled.

In light of the previous reasons, it is apparent that the Respondent registered the disputed domain name having knowledge of the Complainant’s trademark MICHELIN.

The disputed domain name is currently inactive, as the website to which it resolves has no content other than the statement “website coming soon!”.

The passive holding of a disputed domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0, section 3.3”). As discussed and acknowledged by previous UDRP panels, the concept of a domain name “being used in bad faith” is not limited to positive action, as inaction is also within this concept (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Advance Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615).

In analyzing passive holding, the aforementioned Panelists have considered certain factors that may lead inactivity to be considered as bad faith use. The Telstra factors include: (i) the reputation and renown of the Complainant’s trademark; (ii) the lack of evidence of any actual or contemplated good faith use of the disputed domain name; (iii) the Respondent’s active steps to conceal her identity; (iv) the Respondent’s submission of, and failure to correct of false contact details in breach of the registration agreement; and (v) the lack of any plausible active use of the disputed domain name by the Respondent that would not be in bad faith. The Panelists in the AdvanceMagazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com, supra considered that the Respondent’s failure to reply to the Complainant’s communications before the beginning of the proceedings under the Policy (in the form of a Cease & Desist letter), added to the circumstances leading to a finding of bad faith.

This Panel finds some analogies with Telstra Corporation Limited v. Nuclear Marshmallows, supra and Advance Magazine Publishers Inc. and Les Publications Conde Nast S.A., supra casein accordance to the following analysis:

(i) The Complainant’s trademark MICHELIN has a strong reputation and is well-known globally. Additionally, the Complainant holds several trademark registrations in different jurisdictions, including Singapore, where the Respondent appears to be domiciled,

(ii) The Respondent submitted no evidence whatsoever showing any actual or contemplated legitimate or fair use of the disputed domain name,

(iii) The Respondent’s allegations regarding a possible use of the disputed domain name related to a blog about herself has no factual or logical grounds.

(iv) The case file suggests that at the time of registration of the disputed domain name, the Respondent knew of the existence of the Complainant’s trademark MICHELIN. The Respondent has submitted no explanation as to why she has registered a domain that entirely encompasses a well-known trademark as MICHELIN.

(v) Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights.

For the preceding reasons, it is reasonable to infer that the Respondent knowingly registered the disputed domain name with the Complainant’s trademark MICHELIN in mind. Although the Respondent’s true intentions related to the disputed domain name are not clear, her actions make it implausible to think that any future use of the disputed domain name by her would in any way constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The passive holding of the disputed domain name, alongside the evidence filed by the Complainant, are sufficient to conclude that the disputed domain name was registered and is being used in bad faith.

The third element of the Policy has been fulfilled.

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, <ladymichelin.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: June 30, 2017