The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Private by Design, LLC United States of America (the “United States”) / Manh Vu , Viet Nam.
The disputed domain name <usmichelincom.com> is registered with Porkbun LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2020. On August 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 19, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 20, 2020.
The Center verified that the Complaint together with the amendment to the Complaint/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 the Respondent of the Complaint, and the proceedings commenced on August 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2020.
The Center appointed Jane Lambert as the sole panelist in this matter on September 29, 2020. 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.
The Complainant and its subsidiaries are one of the world’s leading tire manufacturers. They have factories and distribution outlets throughout the world including the United States and Vietnam. The group also publishes a series of red and green guides which provide comprehensive and accurate information on hotels, restaurants and tourist attractions. The group’s turnover for 2019 was about EUR 24.13 billion.
The word MICHELIN has been registered by the Complainant’s group as a trade mark for its goods and services wherever it does business. One of those registrations is US trade mark number 5088515 which was registered on November 22, 2016 for a variety of services in classes 35, 36, 40, 41 and 44.
The goods and services of the Complainant and its subsidiaries are advertised and promoted by reference to the MICHELIN mark in all kinds of media. By virtue of the group’s sales and advertising the public around the world associate that mark in relation to tires, publications and many other services with the Complainant.
When the disputed domain name is keyed into a browser, the image of a pig in a smoking jacket holding a pipe appears together with the words “Parked on the Bun”. A screen dump of that page appears on page 6 of Annex 1 to the Complaint. The Panel found the same image when she visited the site on October 4, 2020.
The Complainant requests the transfer of the disputed domain name on the following grounds:
- The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
As to the first ground, the Complainant says that the disputed domain name is confusingly similar to the Complainant’s trade mark in that the disputed domain name incorporates the Complainant’s trade mark in its entirety. The insertion of the letters “us” and “com” do nothing to distinguish the disputed domain name. On the contrary, the letters “us” enhance the impression that the disputed domain name is somehow connected with the Complainant’s business in the United States.
With regard to the second, the Complainant confirms that the Respondent has not been licensed or authorized to register the disputed domain name which it would require in order to avoid an action for trade mark infringement or passing off. None of the circumstances that would indicate that the Respondent has rights or legitimate interests in the disputed domain name mentioned in paragraph 4 (c) seems to apply. Nor does there appear to be any other circumstance that would justify the registration of the disputed domain name.
Referring to Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113, the Complainant submits that bad faith can be found where a respondent “knew or should have known” of the complainant’s trade mark rights and, nevertheless registered a domain name in which it had no rights or legitimate interest. It further submits that it is implausible that the Respondent was unaware of Complainant when it registered the disputed domain name because the Complainant is well-known throughout the world.
The Respondent did not reply to the Complainant’s contentions.
The agreement to register the disputed domain name incorporated by reference paragraph 4 (a) of the Policy:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
In the administrative proceeding, the complainant must prove that each of these three elements are present.
The Panel finds that the first element is present.
The registered trade mark mentioned in paragraph 4 above is indisputably a trade mark in which the Complainant has rights. It is similarly indisputable that a domain name that incorporates that trade mark (albeit with the addition of the letters “us” and “com”) is similar to that mark. The factor that makes that domain name confusingly similar is the entire reproduction of the Complainant’s trade mark with the addition of the letters “us” and “com”.
The Panel holds that the second element is present.
Paragraph 2.1 of the WIPO Overview 3.0 states:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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.”
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It has adduced evidence that it has registered the word MICHELIN as a trade mark in just about every jurisdiction of the world. If and in so far as there remain places in which the Complainant has not registered such a trade mark, the scale and extent of the Complainant’s business activities and its marketing and promotion are such that consumers will associate the appellation MICHELIN in relation to tires and no doubt many other products with the Complainant and none other. Consequently, anyone registering or using such a mark without the Complainant’s consent will risk liability for trade mark infringement and/or passing off. The Complainant has confirmed that it has neither licensed not authorized such use of its trade mark.
Paragraph 4 (c) of the Policy lists a number of circumstances that might demonstrate that a Respondent has rights or legitimate interests to the domain name for purposes of paragraph 4 (a) (ii). The Complainant has stated that none of those circumstances applies to this case and there is nothing in the materials before the Panel to lead her to believe otherwise.
Accordingly, the burden of production has passed to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Even though the Respondent has been given ample opportunity to produce such evidence (if and in so far as it exists) the Respondent has failed to take advantage of that opportunity. It follows that the Complainant must be deemed to have satisfied the second element.
The Panel is satisfied that the third element is present.
The Panel prefers the definition of bad faith in paragraph 3.1 of the WIPO Overview 3.0 to the one proposed by the Complainant above. That paragraph 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”. It continues: “To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, UDRP paragraph 4 (b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith.” Paragraph 4 (b) states that those circumstances are “without limitation” which suggests that the unfair conduct or abuse shall be understood as eiusdem generis the circumstances in paragraph 4 (b).
Had the Respondent parked the disputed domain name on a page with sponsored links and searches this case would have fitted easily into paragraph 4 (b) (iv) because the possibility of commercial gain would have been obvious. The “Park on a Bun” page contains no pay-per-click links. All the other integers of a claim under paragraph 4 (b) (iv) are present.
As the Complainant observes, “us” is an abbreviation for the words “United States”. An inference likely to be drawn by at least some Internet users is that the disputed domain name will lead to a website with information about the Complainant’s activities in the United States. The Panel finds a likelihood of confusion with the Complainant’s mark and that the use of a domain name that combines the Complainant’s trade mark with the letters “us” are likely to attract internet users who are looking for information about the Complainant’s business in the United States.
The Panel concludes that the Respondent’s registration and use of the disputed domain name shows bad faith in a manner close to the one reflected under paragraph 4 (b) (iv). Alternatively, it is conduct that is eiusdem generis the other instances of misconduct in Paragraph 4 (b). Either way it amounts to “unfair advantage or misuse” of the Complainant’s mark and therefore evidence of registration and use in bad faith within the meaning of Paragraph 4 (a) (iii) of the Policy.
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 <usmichelincom.com> be transferred to the Complainant.
Date: October 12, 2020
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