WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Aleksei Shcherbakov, Private Person

Case No. D2017-2574

1. The Parties

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

The Respondent is Aleksei Shcherbakov, Private Person of Minsk, Belarus.

2. The Domain Name and Registrar

The disputed domain name <mojchlennavashmichelin.com> (“the Domain Name”) is registered with REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2017. On December 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 25, 2017, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details, and stating that the language of the registration agreement for the Domain Name is in Russian. On December 28, 2017, the Center sent an email communication to the Parties in both English and Russian, requesting the Parties to submit their comments on the language of the proceeding. On December 28, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified date.

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 in English and Russian, and the proceedings commenced on January 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2018.

The Center appointed Olga Zalomiy as the sole panelist in this matter on February 12, 2018. 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 French manufacturer and seller of tires for airplanes, automobiles, farm equipment, heavy duty trucks, motorcycles, and bicycles.

The Complainant owns several registrations of the MICHELIN trademark, such as:

- International trademark MICHELIN No. 348615, registered on July 24, 1968, duly renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;

- International trademark MICHELIN No. 816915, registered on August 27, 2003, duly renewed and covering services in classes 35, 37, 39 and 42.

In addition, the Complainant operates websites that promote its goods and services under the domain names <michelin.com> and <michelin.ru>, which were registered on December 1, 1993 and on November 20, 1998, respectively.

The Respondent registered the Domain Name on July 1, 2017. The Domain Name consists of the Russian words “moj”, which means “my”; “chlen” which is a slang word for “penis”; “na” means “on”; “vash”, which means “your”, the MICHELIN trademark and the generic Top-Level Domain (“gTLD”) suffix “.com”, which is a vulgar expression of the Respondent’s lack of interest in the Complainant and/or its products. The Domain Name resolves to a registrar parking page.

On August 11, 2017, the Complainant sent cease and desist letter to the Respondent informing it about the Complainant’s trademark rights in the MICHELIN marks, the Respondent’s infringement of the MICHELIN marks and requested transfer of the Domain Name to the Complainant. The Respondent did not reply to the cease and desist letter. The letter was returned to the Complainant undelivered and marked as “not called for”, which means that the Respondent was advised about the Complainant’s letter and chose not to collect it.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions may be summarized as follows:

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant claims that it is the owner of several registrations of the MICHELIN trademark. The Complainant contends that it also operates websites that promote its goods and services under domain names incorporating its MICHELIN trademark. The Complainant argues that the Domain Name incorporates its well-known trademark MICHELIN in its entirety, which is sufficient to establish that the Domain Name is identical or confusingly similar to Complainant’s registered trademark. The Complainant believes that the addition of the generic terms “moj” (i.e., “my” in Russian), “chlen” (i.e. member in Russian) and “navash” (i.e., common surname in the Russian Federation) is insufficient to avoid any likelihood of confusion. The Complainant claims that the gTLD suffix (“.com”) should be disregarded since it is a technical requirement of registration of the Domain Name and does not serve to distinguish the Domain Name from the Complainant’s trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that the Respondent is not affiliated with the Complainant in any way and has not been authorized or licensed by the Complainant to use and register its MICHELIN trademark or to seek registration of any domain name incorporating the aforesaid trademark. Moreover, Respondent is not known by the name “Michelin”. The Complainant argues that the Respondent has no prior rights or legitimate interests in the Domain Name as MICHELIN trademarks have been registered prior to the registration of the Domain Name. The Complainant alleges that the Respondent fails to show any intention of noncommercial or fair use of the Domain Name, because the Respondent has neither used nor made any demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services as the Domain Name resolves towards to the Registrar’s default page which is considered to be an inactive page. The Complainant argues that because the Respondent failed to respond to the Complainant’s cease and desist letter, it can be assumed that the Respondent has no rights or legitimate interests in the Domain Name. It is especially true when, like here, the Complainant’s cease-and-desist letter was returned undelivered and marked as “not called for”.

The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant alleges that it is implausible that the Respondent was unaware of the Complainant’s well-known trademark and business when he registered the Domain Name. The Complainant claims that bad faith may be 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. The Complainant argues that had the Respondent conducted a quick search for the MICHELIN mark, he would have become aware of the existence of the Complainant and its trademarks. The Respondent’s failure to do so is a contributory factor to its bad faith. The Complainant alleges that because the Respondent has neither tried to defend his rights nor offered any valid arguments to justify his registration of the Domain Name in response to the Complainant’s cease-and-desist letter, bad faith registration may be inferred. The fact that the Respondent never collected the cease-and-desist letter from the post office supports this conclusion. The Complainant claims that the Respondent is also using the Domain Name in bad faith because in the absence of any license or permission from Complainant to use such widely-known trademark, the Respondent cannot claim any actual or contemplated bona fide or legitimate use of the Domain Name. The Complainant claims that passive holding of the Domain Name, does not amount to its good faith use. The Complainant further argues that reproducing a famous trademark in a domain name in order to attract Internet users to an inactive website cannot be considered fair use or use in good faith. The Complainant believes that the Respondent is trying to benefit from the fame of the Complainant’s trademark. Finally, the Complainant claims that it is likely that the Respondent registered the Domain Name to prevent the Complainant from using its trademark in the Domain Name, which constitutes evidence of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the proceeding

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.” ¹ The default language of this administrative proceeding is Russian since it is the language of the Registration Agreement for the Domain Name. However, the Complainant filed the Complaint in English and requested English to be the language of this proceeding. The Respondent did not comment on the language of the proceeding.

The Rules allow the UDRP panel to determine language of the administrative proceeding having regard to the circumstances of the case in the spirit of fairness to the parties and taking into account time and cost of the proceeding.² Where it appears the parties reasonably understand the nature of the proceedings and the panel can understand both the language of the complaint and one of the respondent’s submissions, prior UDRP panels found it to be fair to the parties to conduct the proceeding in the language other than the language of the registration agreement.

In this case, the Complainant claims that Respondent is proficient in languages other than Russian, because the Domain Name includes only Latin characters. The Complainant argues that the Respondent’s knowledge of English may be assumed because English is the primary language for international relations and it is one of the working languages of the Center.

The Panel, who is proficient in both Russian and English, finds that the circumstances of this case indicate that the Respondent might be capable of understanding English because the Respondent registered the Domain Name consisting of Russian words in Latin script, which is similar to the Complainant’s trademark to create a coherent sentence. When script of the domain name is different from the respondent’s native language, it may indicate that the respondent is familiar with the languages other than their native language.³

In light of the Respondent’s decision not to participate in this administrative proceeding and his possible ability to understand English, it would not be fair or equitable to require the Complainant to incur unnecessary time and expense of translating its pleadings into another language.

The Panel, therefore, finds that English is the appropriate language of this proceeding because it will encourage fair and expeditious resolution of this dispute.

6.2. General discussion

Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:

(i) the 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 Domain Name; and

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

A. Identical or Confusingly Similar

To prove the first UDRP element, the Complainant must demonstrate that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has established its rights in the MICHELIN trademark by submitting copies of trademark registrations for the MICHELIN trademarks in various jurisdictions. It is well established that “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”⁴

It is well established that “a domain name consisting of a trademark and a … pejorative term ….would be considered confusingly similar to the complainant’s trademark for the purpose of satisfying the standing requirement under the first element of the UDRP”⁵.

Here, the Domain Name consists of the MICHELIN trademark, the Russian words “moj”, which means “my”; “chlen” which is a slang word for “penis”; “na” means “on”; “vash”, which means “your” and the gTLD suffix “.com”. Combined together, the words in the second level domain create a vulgar expression which means that the Respondent does not care about the Complainant’s brand. The Complainant’s MICHLIN trademark is clearly recognizable in the Domain Name, and the addition of the abovementioned pejorative phrase does not avoid the finding that the Domain Name is confusingly similar to the Complainant’s trademark. The gTLD suffix is disregarded under the confusing similarity test. ⁶

Thus, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s trademark and the Complainant satisfied the first element of the UDRP.

B. Rights or Legitimate Interests

Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.⁷ Once the complainant has made out the prima facie case, the respondent carries the burden of producing evidence demonstrating it has rights or legitimate interests in the domain name.⁸ Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.⁹

The Complainant claims that the Respondent does not hold any “rights” by way of trademarks or common law rights in and to the term “michelin”. The Complainant alleges that it has never been given permission by the Complainant to use its trademark in domain names, or for any other purpose. It is well established that typically in the absence of any license or permission from a complainant to use the complainant’s trademarks, no bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com, Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.

Furthermore, the record shows that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Domain Name <mojchlennavashmichelin.com> does not resolve to any developed website does did not appear to have done so. There is no evidence of any use or preparations to use that Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.

The Panel finds that it is more likely than not that the Complainant’s contentions are true, because the Respondent did not dispute the Complainant’s contentions and there is no evidence to the contrary. The evidence on file shows that the Respondent has not been commonly known by the Domain Name and he is not making legitimate commercial or fair use of the Domain Name.

It is well established that a domain name that by itself criticized the mark owner may constitute protected free speech, see Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627. “Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false.”¹⁰ Here, however, while it is possible that the Respondent intended to use the Domain Name in connection with a website offering genuine criticism of the Complainant’s goods, the Panel has nothing before her to demonstrate the Respondent’s true intention.

The Respondent’s choice of the Latin script for the Domain Name is telling. As the Complainant’s allegations indicate, the true meaning of the Domain Name is not clear to a non-Russian speaker. Had the Respondent intended the Domain Name to serve for a criticism website, it could have chosen to register the Domain Name either in the Cyrillic script, or in English or any other language that would truly convey his message. The Respondent’s failure to deny the Complainant’s allegations supports this conclusion. Therefore, without any supporting evidence of the Respondent’s true intentions as to the use of the Domain Name, the Panel finds, on balance that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Therefore, the Panel holds that the second element of the UDRP has been satisfied.

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.

The Panel finds that the Respondent registered the Domain Name in bad faith because at the time of the Domain Name registration the Respondent was clearly aware of the Complainant, its business and its well-known MICHELIN trademarks. The Respondent’s choice of the Domain Name as a vulgar expression of his lack of regard for the Complainant’s MICHELIN trademark, shows that the Respondent knew of the Complainant’s trademark. Under the circumstances, the Panel finds that the Domain name was registered in bad faith.

The Panel also finds that the Respondent’s decision not to participate in this proceeding and his refusal to collect the Complainant’s cease and desist letter, support this conclusion. Finally, the Panel finds that the Respondent’s choice of the Domain Name as a combination of a vulgar Russian expression in the Latin script in connection with the Complainant’s trademark only serves to disrupt the Complainant’s online activities. As outlined above, no actual criticism appears on the website. Here, the Panel finds the Respondent’s conduct to amount to bad faith use of the Domain Name for the purposes of the Policy.

The Panel, therefore, finds that the Respondent registered and is using the Domain Name in bad faith and the Complainant satisfied the third element of the UDRP.

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

Olga Zalomiy
Sole Panelist
Date: February 25, 2018