WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Milen Radumilo

Case No. DCO2020-0090

1. The Parties

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

The Respondent is Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <viamichelin.co> is registered with Communi Gal Communications Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2020. On December 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 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 December 11, 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 amended Complaint on December 15, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2021.

The Center appointed Federica Togo as the sole panelist in this matter on February 11, 2021. 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 the registered owner of several trademarks worldwide consisting of or containing the term MICHELIN e.g., International Registration No. 348615 MICHELIN (word) registered on July 24, 1968, amongst others for “tires of all kinds and for all purpose” in class 12 and designating several countries worldwide. This mark has been duly renewed and is in force; European Union Trade Mark Registration No. 009914731 MICHELIN (word) registered on September 27, 2011, amongst others for “Data carriers with information and advice in relation to road itineraries, addresses of tourist sites, hotels and restaurants” in class 9 and for “Services for researching and providing information and advice in relation to road itineraries, addresses of tourist sites, hotels and restaurants, and in relation to culinary matters and gastronomy, restaurants and hotels, food items and alcoholic and non-alcoholic beverages” in class 35. This mark is in force.

The Complainant’s owns the website “www.michelin.com”, created on November 30, 1993, which is used by the Complainant in connection with its activity. In addition, the Complainant also owns the website “www.viamichelin.com”, created on November 7, 2000, which is used for its ViaMichelin services.

It results from the information available in the WhoIs that the disputed domain name was created on October 4, 2020.

Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolves to a parking website comprising pay-per-click links, which are related to the field of activity of the Complainant.

5. Parties’ Contentions

A. Complainant

It results from the Complainant’s undisputed allegations that the Complainant is a leading tire company, dedicated to enhancing its clients’ mobility, sustainably; designing and distributing the most suitable tires, services and solutions for its clients’ needs; providing digital services, maps and guides to help enrich trips and travels; and developing high-technology materials that serve the mobility industry. Headquartered in France, the Complainant is present in 171 countries, has more than 114,000 employees and operates 69 tire manufacturing facilities and sales agencies in 17 countries. For 130 years, Michelin has been innovating to facilitate mobility by offering tires and services that meet the real needs of its customers. The Michelin Group started its activity in Romania in August 2001 and experienced a rapid development. Starting with 2014, Romania became the coordination center of the new commercial area in Central and Southern Europe. In 2001, ViaMichelin was set up to develop digital services for travel assistance. These free services give users all the useful information they need to prepare their trips. The creation in 2001 of the subsidiary ViaMichelin shows Michelin Group’s willingness to engage in supporting mobility on digital media. Following its presence in the market for maps and tourist guides with the Michelin Guide and Michelin maps, the Michelin Group decided to offer under the name ViaMichelin, a wide range of services to both the general public and the business sector including mapping, route plans, online hotel booking, Michelin Guide hotel, restaurant and tourist recommendations and weather and traffic reports. These services are available across a range of digital channel including the Internet, mobile handsets and personal navigation devices. Digital services were developed in the 2010’s, with the launch of the Michelin Restaurants website in 2012, and of the Michelin Mobility Apps in 2013. This package of six free apps met the needs of travelers in all their travels: Michelin MyCar, Michelin Navigation, ViaMichelin, Michelin Restaurants, Michelin Hotels and Michelin Travel. In 2015, ViaMichelin was deployed in 13 countries.

The Complainant contends that its trademarks MICHELIN enjoy a worldwide reputation.

The Complainant further contends that the disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN, since the disputed domain name reproduces the Complainant’s trademark MICHELIN in its entirety (which previous UDRP panels have considered to be “well-known” or “famous”) preceded by the element “via”, thereby making a direct reference to the Complainant’s well-known trade name ViaMichelin and its domain name viamichelin.com. In addition, the mere adjunction of a country code Top-Level Domain (“ccTLD”) such as “.co” is irrelevant.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is neither affiliated with the Complainant in any way nor have they been authorized by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said mark. In addition, the Respondent is not commonly known by the disputed domain name or the name “MICHELIN”. It further results from the Complainant’s undisputed contentions that the disputed domain name redirects to a parking page displaying commercial links related to the field of activity of the Complainant. According to the Complainant, this is likely to mislead Internet users into believing that the disputed domain name is connected to the Complainant’s business. The Complainant therefore concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, as the Respondent is taking unfair advantage of the Complainant’s goodwill and reputation for his own financial gain.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant’s undisputed allegations, it is implausible that the Respondent was unaware of the existence of the Complainant and its trademarks at the time of registration of the disputed domain name given the worldwide reputation of the Complainant and its MICHELIN trademarks and the composition of the domain name entirely reproducing the Complainant’s trademark MICHELIN and the tradename ViaMichelin. According to the Complainant, the Respondent could simply not have chosen the disputed domain name for any reason other than to deliberately cause confusion amongst Internet users in order to capitalize on or otherwise take unfair advantage of the Complainant’s rights, goodwill and reputation, which clearly constitutes bad faith.

The Complainant further contends that the Respondent uses the disputed domain name with the purpose of capitalizing on the notoriety of the Complainant’s trademark MICHELIN, since according to the Complainant’s proved allegations the disputed domain name redirected to a parking page displaying commercial links related to the field of activity of the Complainant. Finally, according to the Complainant, the Respondent is a well-known cybersquatter that has been the subject of a number of UDRP proceedings.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

(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.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the element MICHELIN. Reference is made in particular to International Registration No. 348615 MICHELIN (word) registered on July 24, 1968, amongst others for “tires of all kinds and for all purpose” in class 12 and designating several countries worldwide. This mark has been duly renewed and is in force; European Union Trade Mark Registration No. 009914731 MICHELIN (word) registered on September 27, 2011, and amongst others for “Data carriers with information and advice in relation to road itineraries, addresses of tourist sites, hotels and restaurants” in class 9 and for “Services for researching and providing information and advice in relation to road itineraries, addresses of tourist sites, hotels and restaurants, and in relation to culinary matters and gastronomy, restaurants and hotels, food items and alcoholic and non-alcoholic beverages” in class 35. This mark is also in force.

UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g. LEGO Juris A/S v. ken Teo, WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark MICHELIN is fully included in the disputed domain name, preceded by the term “via”. Furthermore, it is the view of this Panel that the addition of the term “via” in the disputed domain name cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark since the Complainant’s trademark is clearly recognizable in the disputed domain name. Finally, the ccTLD “.co” of the disputed domain name is generally disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark MICHELIN or the registration of the disputed domain name.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

In addition, it results from the undisputed evidence before the Panel that the disputed domain name resolves to parking websites comprising pay-per-click links that compete with or capitalize on the Complainant’s trademark. UDRP panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0 at section 2.9, with further references). This Panel shares this view and notes that the Complainant’s trademark MICHELIN has gained a worldwide reputation. Therefore, such use can neither be considered as bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Complainant’s prima facie case is unrebutted and that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

It is the view of this Panel that these circumstances are met in the case at hand.

The Complainant’s trademarks have existed for decades and have gained a worldwide reputation. Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant’s MICHELIN trademarks when he registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed MICHELIN mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g., LEGO Juris A/S v. ken Teo, WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, supra; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,supra; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, supra; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth, WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320). In addition, the Panel notes that the Complainant operates the domain name <viamichelin.com>, which is identical in the Second-Level to the disputed domain name.

The Complainant also proved that the disputed domain name resolves to a parking website comprising pay-per-click links that compete with or capitalize on the Complainant’s trademark, so that the Panel is satisfied that the disputed domain name, incorporating in its entirety the Complainant’s trademark that has gained a worldwide reputation, is being used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s websites or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or locations, or of a product or service on the Respondent’s websites or locations.

Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith. In fact, (1) the Respondent did not provide any response with a conceivable explanation of its behavior and (2) the Respondent has been involved in a number of trademark-abusive domain name registrations (see e.g.Compagnie Générale des Etablissements Michelin v. Contact Privacy Inc. Customer 0156357741 / Milen Radumilo, WIPO Case No. D2020-1277; Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-2541; Littlethings, Inc. v. Milen Radumilo, WIPO Case No. D2017-0745). In the view of the Panel this behavior demonstrates a pattern of conduct by the Respondent of taking advantage of trademarks of third parties without any right to do so and is further indicative of the Respondent’s bad faith.

In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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 <viamichelin.co> be transferred to the Complainant.

Federica Togo
Sole Panelist
Date: February 25, 2021