WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Domains By Proxy, LLC DomainsByProxy.com / Heart Bleed

Case No. D2019-1211

1. The Parties

Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & Associés, France.

Respondent is Domains By Proxy, LLC DomainsByProxy.com, United States of America (“United States”) / Heart Bleed, India.

2. The Domain Name and Registrar

The disputed domain name <viamichelin.onl> (the “Domain Name”) 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 28, 2019. On May 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 31, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 4, 2019.

The Center verified that the Complaint together with the amended 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 June 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2019. No formal Response was filed with the Center. However, two brief emails were received from a third Party on June 7 and 18, 2019. On June 30, 2019, the Center informed the Parties of the commencement of panel appointment process.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 5, 2019. 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

Complainant is a leading tire company, operating to enhance its clients’ mobility; designing and distributing tires and services for its clients’ needs; providing digital services, maps and guides to assist on trips and travels; and developing high-technology materials that serve the mobility industry. Its main website is available at “www.michelin.com”.

Complainant has 111,700 employees and operates 68 production facilities in 17 countries, which together produced 187 million tires in 2016. Since its founding, Complainant has acquired reputation and goodwill worldwide in its MICHELIN brand, products and services. In 2017, for the third consecutive year, the Reputation Institute, which ranks the world’s brands according to their reputation, ranked MICHELIN as the top brand in France and 13th worldwide. Complainant also enjoys considerable reputation in other countries, including China, Germany, Italy, the United Kingdom and the United States. Other reputation surveys rank Complainant as the leading company in its business sector.

Michelin Travel Partner, a wholly-owned subsidiary of the Michelin Group, is a French company that designs, develops and markets Michelin tourism products and digital mobility assistance services. Michelin Travel Partner publishes Complainant’s websites and mobile and tablet applications, such as the application ViaMichelin. Complainant’s main websites for its ViaMichelin services are available at “www.viamichelin.com”.

Complainant is the owner of numerous MICHELIN trademark registrations, including:

- MICHELIN, European Union Trademark No. 001791243, filed on August 3, 2000, registered on October 24, 2001 (renewed), covering goods in classes 6, 7, 12, 17, 28;

- MICHELIN, International Registration Trademark No. 771031, registered on June 11, 2001 (renewed), and covering goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42.

In addition, Complainant operates domain names reflecting its trademarks to promote its services, including:

<michelin.com> registered on December 1, 1993.

<viamichelin.com> registered on November 7, 2000.

The Domain Name was registered on August 12, 2018. According to the Complaint, the Domain Name resolved to a website offering a link that appears to be fake download of “ViaMichelin” application. On January 24, 2019, Complainant requested the webhost to deactivate the website at the Domain Name. After the notification of Complaint, the Domain Name no longer resolves to an active website.

5. Parties’ Contentions

A. Complainant

(i) Identical or Confusingly Similar

Complainant states that its MICHELIN trademarks enjoy a worldwide reputation. Complainant owns numerous MICHELIN trademark registrations around the world. The Domain Name is confusingly similar to Complainant’s MICHELIN trademark and to its application, “ViaMichelin”. The Domain Name reproduces Complainant’s MICHELIN mark in its entirety, which previous UDRP panels have considered to be

well known or famous. Further, Complainant asserts that in many UDRP WIPO decisions, panels consider that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to a complainant’s registered trademark.

Here, Complainant explains that Respondent reproduces entirely Complainant’s MICHELIN mark in the Domain Name, preceded by the element “via”, thereby making a direct reference to Complainant’s application, “ViaMichelin”, as well as to Complainant’s domain name <viamichelin.com>. Further, Complainant contends that the adjunction of a generic Top-Level Domain (“gTLD”) such as “.onl” is irrelevant, as it is well established that the gTLD does not have any impact on the overall impression of the dominant portion of a disputed domain name and is therefore irrelevant in determining confusing similarity between the mark and the domain name.

Complainant claims that by registering the Domain Name, Respondent created a likelihood of confusion with Complainant’s trademark. It is likely that the Domain Name could mislead Internet users into thinking that it is, in some way, associated with Complainant.

(ii) Rights or Legitimate Interests

Complainant states that Respondent is neither affiliated with Complainant nor has Respondent been authorized by Complainant to use and register its trademarks, or to seek registration of any domain name incorporating the marks. Furthermore, Respondent has no prior rights or legitimate interests in the Domain Name. The registration of the MICHELIN trademark preceded the registration of the Domain Name by many years. Complainant asserts that Respondent is not commonly known by the Domain Name or the name Michelin.

In addition, Respondent cannot assert that, before any notice of this dispute, Respondent was using, or had made 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, as the Domain Name, which incorporates Complainant’s trademark, resolved to a page relating to the download of the “Viamichelin” application without any prior authorization from Complainant. This is likely to mislead Internet users into believing that the Domain Name is connected to Complainant’s business. Such use of the Domain Name cannot be considered a bona fide offering of goods or services as Respondent is taking unfair advantage of Complainant’s goodwill and reputation for its own financial gain. Complainant contends that prior UDRP panels have found that in the absence of any license or permission from a complainant to use such

widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.

Further, Complainant contends that Respondent cannot assert that Respondent has made or is currently making a legitimate noncommercial or fair use of the Domain Name, given the nature of the Domain Name itself which associates Complainant’s MICHELIN trademark to the element “via” corresponding to Complainant’s application, “ViaMichelin”, which is used for Complainant’s digital travel assistance products and services for road users.

Finally, given Complainant’s goodwill and renown worldwide, and the nature of the Domain Name, which is confusingly similar to Complainant’s trademark, it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the Domain Name, as it would invariably result in misleading diversion and take unfair advantage of Complainant’s rights.

(iii) Registered and Used in Bad Faith

Complainant contends that bad faith can be found where a respondent knew or should have known of a complainant’s trademark rights and, nevertheless registered a domain name in which respondent had no rights or legitimate interests. Here, it is implausible that Respondent was unaware of Complainant when registering the Domain Name, for the following reasons:

First, Complainant is well known throughout the world. Second, the composition of the Domain Name entirely reproduces Complainant’s MICHELIN trademark and the application, “ViaMichelin”, which demonstrates that Respondent was aware of Complainant when registering the Domain Name. In this regard, bad faith has 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 MICHELIN trademark and Complainant’s application “ViaMichelin”, registration in bad faith can be inferred. Third, Complainant’s trademark rights significantly predate the registration date of the Domain Name, which was registered in 2018. In this regard, previous UDRP panels have established that knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of a disputed domain name proves bad faith registration.

Complainant states that under paragraph 2 of the Policy, it is established that when someone registers a domain name, that person represents and warrants that, to his/her knowledge, the registration of the domain name will not infringe the rights of any third party. This means that it was Respondent’s duty to verify that the registration of the Domain Name would not infringe the rights of any third party. A quick MICHELIN trademark search would have revealed to Respondent the existence of Complainant and its trademark. Respondent’s failure to do so is a contributory factor to its bad faith. Further, supposing that Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple search via Google or any other search engine using the keyword “michelin” demonstrates that all first results relate to Complainant’s products or news. In this age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. 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 Domain Name.

Finally, Complainant submits that given Complainant’s goodwill and renown worldwide, and the nature of the Domain Name, which consists of Complainant’s MICHELIN trademark and “ViaMichelin” application under the .onl extension (and, furthermore, is confusingly similar to Complainant’s domain name <viamichelin.com>, where Complainant offers its services), Respondent could not have chosen the Domain Name for any reason other than to deliberately cause confusion for Internet users to capitalize on or otherwise take unfair advantage of Complainants rights, goodwill and reputation, which constitutes bad faith.

Complainant also contends that Respondent is using the Domain Name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the services offered on Respondent’s website. As the Domain Name is confusingly similar to Complainant’s trademark, previous UDRP panels have ruled that a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site.

Complainant states that given its goodwill and renown worldwide and the nature of the Domain Name itself, which reproduces and is confusingly similar to Complainant’s famous MICHELIN trademark and “ViaMichelin” application, there simply cannot be any actual or contemplated good faith use of the Domain Name by Respondent or any third party, as any use would result in misleading diversion and unfairly taking advantage of Complainant’s rights.

Furthermore, Complainant submits that the Domain Name resolved to a page relating to the download of the “ViaMichelin” application (probably a fake one). Respondent is thus using the Domain Name to intentionally, attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the services offered on Respondent’s website. Respondent’s use of the Domain Name for the purpose of capitalizing on the notoriety of Complainant’s trademark MICHELIN cannot constitute good faith. Further, it is likely that Respondent registered the Domain Name to prevent Complainant from using its trademark in the Domain Name. According to previous UDRP panels, this type of conduct constitutes evidence of Respondent’s bad faith.

Consequently, Complainant claims that Respondent both registered and used the Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

B. Respondent

Respondent did not reply to Complainant’s contentions. The Center received an email note on June 7, 2019 from an individual, who stated that

“we have received a notice for WIPO Case No. D2019-1211. Please note that the notice is addressed to ‘Heart Bleed’ and concerning domain viamichelin.onl. This notice is incorrectly sent to us. There is nobody by the name of Heart Bleed here. In addition, we do not own or have anything to do with this domain.

We request you to send the notice to the right person and confirm through an official mail that you have withdrawn the notice sent to us.”

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has established rights in its well -known MICHELIN trademark, based on its trademark registrations and use of the mark in many countries around the world. Indeed, the Panel rules that Complainant has very strong rights in its well-known and distinctive MICHELIN mark.

Further, the Panel determines that the Domain Name is confusingly similar to Complainant’s MICHELIN mark. The Domain Name incorporates the mark in its entirety, while adding the prefix “via,” which does nothing to dispel confusing similarity, but instead references Complainant’s trade name “ViaMichelin”, which is used for Complainant’s digital travel assistance products and services for road users. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); see also Compagnie Générale des Etablissements Michelin (Michelin) v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2012-2224 (domain name <viamichelinfr.com> is confusingly similar to the complainant’s very distinctive trademark MICHELIN).

Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its MICHELIN trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name was linked to a webpage that offers the download of what appears to be a fake “ViaMichelin” application. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest.

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Here, the Panel determines that the Domain Name was registered and is being used in bad faith. First, based on the evidence, there is little doubt that Respondent was aware of Complainant and its well known MICHELIN mark, and targeted that mark, when it registered the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive MICHELIN trademark in its entirety, along with the prefix “via.” Given the fame of the MICHELIN trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark (and one of Complainant’s “ViaMichelin” application), the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its MICHELIN mark when registering the Domain Name. See Compagnie Générale des Etablissements Michelin v. Xujing, WIPO Case No. DCC2017-0002 (“Respondent must have been aware of the Complainant’s well-known MICHELIN trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name. The Complainant is well known through the world”); Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well known name and products […] its very use by someone with no connection with the products suggests opportunistic bad faith”).

Moreover, the Domain Name linked to a webpage that offered the download of what appears to be a fake “ViaMichelin” application. Respondent’s use of the Domain Name for this purpose constitutes use in bad faith. Respondent was using the Domain Name to intentionally attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the services offered on Respondent’s website, which did not appear to be lawful. Although the Domain Name does not currently resolve to an active website this does not prevent a finding of bad faith.

The Panel also finds that the composition of the Domain Name (i.e., Complainant’s trademark plus terms connected to one of Complainant’s trade names) effectively impersonates or suggests sponsorship or endorsement by Complainant. Given Complainant’s renown worldwide and the nature of the Domain Name itself, there simply cannot be any actual or contemplated good faith use of the Domain Name by Respondent, as any use would result in misleading diversion and unfairly taking advantage of Complainant’s rights.

In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy in accordance with paragraph 4(a)(iii).

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, <viamichelin.onl>, be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: August 7, 2019