WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin (Michelin) v. Osnaga Theodor Radu, *depozitul de anvelope.ro [P.J.]*

Case No. DRO2012-0001

1. The Parties

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

The Respondent is Osnaga Theodor Radu, *depozitul de anvelope.ro [P.J.]* of Bucharest, Romania.

2. The Domain Name and Registrar

The disputed domain name <michelin-anvelope.ro> is registered with ROTLD.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2012. On January 6, 2012, the Center transmitted by email to ROTLD a request for registrar verification in connection with the disputed domain name. On January 9, 2012, ROTLD transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 26, 2012. On January 24, 2012 the Center sent an email communication to the Parties indicating that the language of the registration agreement was Romanian and giving them the opportunity to comment. The Complainant submitted a request for English to be the language of the administrative proceeding. The Respondent did not submit any comment.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2012.

On February 13, 2012 the administrative proceeding was suspended. On March 14, 2012 the administrative proceeding was re-instituted and the new Response due date was March 21, 2012. The Respondent did not submit any formal Response, but sent an email communication to the Center on March 14, 2012.

The Center appointed Mihaela Maravela as the sole panelist in this matter on March 26, 2012. 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.

Language of the proceedings

As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:

“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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

“However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” See, Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004.

In the present case:

- the Registrar of the disputed domain name has informed the Center that the language of the relevant Registration Agreement was Romanian,

- the Complainant has filed the Complaint in English, and following the Language of Proceedings Notification of the Center dated January 24, 2012, the Complainant confirmed on January 25, 2012 its request for English to be the language of the proceedings, arguing, inter alia, that the Complainant is not familiar with the Romanian language, while the Respondent is probably more capable to communicate in English since the only elements present on the Respondent’s website are advertising banners which display advertising slogan in English; the Complainant also argued that the Registration Agreement was available in both Romanian and English language;

- the Respondent did not file a Response but transmitted an email to the Center in English language.

According to the Rules, paragraph 11(a), based on the circumstances of this case and as previously decided by other UDRP panels (LEGO Juris A/S v. Ilie Cezar, WIPO Case No. DRO2011-0010; Nilfisk-Advance A/S v. SC Getic Decor SRL, WIPO Case No. DRO2009-0007; Yannidis Brothers SA, and SC Vitex Hermes SRL v. SC IOANNINA PRODUCT SRL, WIPO Case No. DRO2009-0009), the Panel finds that the language of the present proceeding should be English, for the following reasons:

- The Complainant requested for English to be the language of the administrative proceedings;

- English was the language of some correspondence which seems to have been carried before the filing of the present Complaint, without protest from the Respondent;

- during the present proceedings, the Respondent carried some correspondence with the Center in English language;

- the mentioned correspondence with the Center is an indication that the Respondent is familiar with the English language;

- in the said statements the Respondent did not oppose to English as the language of the proceedings;

- there are no provisions, on the Registrar’s website, for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement at the time the domain name was registered on November 12, 2008 (see Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003; Companie Générale des Établissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL, WIPO Case No. DRO2006-0004; Dell Inc. v. C.I.T. GRUP SRL, WIPO Case No. DRO2007-0007).

4. Factual Background

According to the information provided by the Complainant and not refuted by the Respondent, the Complainant owns the trademark MICHELIN, which is largely protected in the world, including in Romania, in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and maps publications. The Complainant also has a definite and undisputable reputation in the automotive industry and in French gastronomy.

The Complainant is present in Romania since August 2001. Today, the Complainant has three factories in this country, one in Floresti and two in Zalau, and its subsidiary Michelin Romania has its head office in Bucharest. Michelin Romania produces various types and brands of tires, new tires sold through a nationwide network of distribution, export and steel cord tires in Europe and North America. Romania has become, since January 2005, the regional center for commercial activities of the Group of Albania, Bosnia Herzegovina, Bulgaria, Croatia, the former Yugoslav Republic of Macedonia, Montenegro and Serbia.

The Complainant also owns and mainly communicates on the Internet via various websites in order to present and to propose to the Internet users its services and products, and among them “www.michelin.com”. The Complainant has also registered various local domain names for the purposes of its network of distribution such as <michelin.ro> in Romania, where the Respondent is located.

According to the information received from the Registrar, the Respondent is Osnaga Theodor Radu *Depozitul de anvelope.ro [P.J.]*.

This proceeding concerns the disputed domain name <michelin-anvelope.ro> registered on November 12, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant argues that it and its MICHELIN trademarks enjoy a worldwide reputation. The Complainant owns numerous MICHELIN trademark registrations around the world and notably in Romania where the Respondent is located.

The Complainant is in particular the owner of the following trademark registrations related inter alia to tires production and sale:

- MICHELIN, Community Trademark No. 004836359, dated January 4, 2006 and covering goods and services in classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 34 and 39.

- MICHELIN, Community Trademark No. 007333834, dated October 13, 2008 and covering goods in classes 1, 8, 9, 11, 12, 16, 20, 21 and 28.

- MICHELIN, Community Trademark No. 005670872, dated January 23, 2007 and covering goods in classes 3, 4, 7, 9, 11, 12, 20 and 28.

The disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN. Indeed, the disputed domain name substantially reproduces the Complainant’s trademark MICHELIN in its entirety. The Complainant’s trademark MICHELIN has been considered by previous UDRP panels as “well-known” or “famous” (Compagnie Générale des Etablissements Michelin (Michelin) v. Rosa Chen, WIPO Case No. D2011-1326; Compagnie Générale des Etablissements Michelin v. Mikhail Bulatcekij, WIPO Case No. D2011-0473; Compagnie Générale des Etablissements Michelin (Michelin) v. Jorge Almeida, WIPO Case No. D2011-0147; Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484). The addition of a country-code top-level domain (“ccTLD”) suffix such “.ro” is not to be taken into consideration since it does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar to a trademark.

Also, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name since the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the MICHELIN trademarks preceded the registration of the disputed domain name for years. Moreover, the Respondent is not commonly known by the name “Michelin”, in any way affiliated with the Complainant, nor authorized or licensed to use the MICHELIN trademark, or to seek registration of any domain name incorporating said mark. The only reason of the Respondent in registering and using the disputed domain name is to benefit from the reputation of the trademark MICHELIN. Furthermore, the Respondent did not demonstrate, before receiving any notice of the dispute, use of, or demonstrable preparations to use the disputed domain name in connection with a bonafide offering of goods or services. On the contrary, following reception of the cease-and-desist letter from the Complainant, the Respondent has removed almost all sponsored links from its website, most probably in order to hide the prejudicial elements. The banners which remain on the parking page are very likely to generate revenues for the Respondent.

The Complainant also contends that the disputed domain name was registered and is used in bad faith since the Complainant is well-known throughout the world, including in Romania. The disputed domain name includes a generic word which strengthens the identification with the Complainant for Romanian users. As the Respondent has no connection with the Complainant and its very well-known trademark, opportunistic bad faith can be pointed out. The content of the website to which the disputed domain name resolves is made of advertising banners. Furthermore, those commercial links are displayed to a parking page. The Respondent is therefore monetizing on the Complainant’s well-known mark. Consequently the use of the disputed domain name falls entirely within the scope of paragraph 4(b)(iv) for demonstrating bad faith use. Also, the Complainant argues that, based on the standards retained by previous UDRP panels in situations where there is inaction, the Respondent’s current passive holding of the disputed domain name is likely to constitute bad faith use of the disputed domain name.

B. Respondent

The Respondent did not file a formal response; rather he transmitted an email communication to the Center on March 14, 2012 asking if he could delete the disputed domain name from his property or if the Complainant wanted a transfer. Having in mind that the Respondent did not actually offer to transfer the disputed domain name to the Complainant, the Panel will analyse if the conditions provided for a complaint to succeed are met.

6. Discussion and Findings

Because the Respondent has defaulted in providing a response to the allegations of the Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (id., paragraph 15(a)):

“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

A UDRP panel must find that: (a) the Complainant has a trademark or service mark; and (b) that the domain name is identical or confusingly similar to that trademark or service mark.

Here, the Complainant has demonstrated ownership of the registered trademark MICHELIN by submitting the community trademark No. 004836359 of January 4, 2006, the community trademark No. 007333834 of October 13, 2008 and the community trademark No. 005670872 of January 23, 2007. The registrations submitted predate the registration of the disputed domain name.

The question of confusing similarity for the purpose of the Policy requires a comparison of the disputed domain name with the trademark.

The Complainant’s trademark MICHELIN is entirely incorporated in the disputed domain name <michelin-anvelope.ro>. The addition of the generic term “anvelope” which in Romanian language means “tires” does not confer a distinctive character to the disputed domain name, in relation to the Complainant’s trademark. As held by previous UDRP panels in similar cases, the use of the trademark in connection with other words does not lessen the confusing similarity between the disputed domain name and the complainant’s trademark. See LEGO Juris A/S v. Ilie Cezar, WIPO Case No. DRO2011-0010.

It is well accepted that a ccTLD may be ignored when assessing identity or confusing similarity of a trademark and a domain name (see, e.g.VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Billa Aktiengesellschaft v. Ganea Nicolae, WIPO Case No. DRO2002-0001; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001).

In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the disputed domain name is confusingly similar to the Complainant’s trademarks. See also Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441.

The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the panel, may demonstrate a respondent’s right or legitimate interest in a domain name:

(i) before any notice to it of the dispute, the respondent’s use 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 has been commonly known by the domain name, even if it 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 consensus view of WIPO UDRP panels concerning the burden of establishing rights or legitimate interests in respect of a domain name is as follows:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”),paragraph 2.1.)

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser,WIPO Case No. D2008-0210).

By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the disputed domain name. The only evidence in this connection is that provided in the Complaint, and which is self-evident from the website to which the disputed domain name resolves.

As such, the Complainant has adduced evidence that the disputed domain name is used in connection to a “pay-per-click (PPC) landing” site. However, when the Panel tried to type in the disputed domain name prior to drafting this Decision, it discovered that the content of the website for which the Complainant provided evidence of use (for a PPC page) has changed in the sense that an error occurred when trying to enter the website and the requested page could not be find. The Respondent has not demonstrated any reason as to why the content of the website appears to have been changed following the filing of the Complaint.

Irrespective of such change, as other UDRP panels have held, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by the disputed domain name, that the Respondent possesses any trademark or service mark rights in the disputed domain name, or that the Respondent has other authority or permission to use the Complainant’s marks. Indeed, the Complainant states expressly that the latter is not the case. See, e.g., Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti,WIPO Case No. D2001-1158 (finding no legitimate interest because, inter alia, the complainant had not licensed mark to the respondent). Furthermore, by not submitting a response to the Complaint, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some rights or legitimate interests in the disputed domain name. Ahead Software AG. v. Leduc Jean, WIPO Case No. D2004-0323; see also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (respondent’s default alone sufficient to conclude that it had no rights or legitimate interests in the domain name). See V&V Supremo Foods, Inc. v. [email protected], WIPO Case No. D2006-1373.

The failure of the Respondent to reply to the Complainant’s contentions and the evidence adduced by the Complainant lead the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name. See in this respect Hermes International v. Yang Fen, WIPO Case No. D2010-2272.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

To fulfill the third requirement, the complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith:

(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark, or to a competitor of the complainant, for a valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.

(ii) Circumstances indicating that the respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.

(iii) Circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.

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

The Panel agrees with the contention alleged by the Complainant that the Respondent had knowledge of the Complainant’s trademarks when it registered the disputed domain name having in mind the fact that the trademark of the Complainant is well-known, as held by previous UDRP panels (Compagnie Générale des Etablissements Michelin (Michelin) v. Rosa Chen, WIPO Case No. D2011-1326; Compagnie Générale des Etablissements Michelin v. Mikhail Bulatcekij, WIPO Case No. D2011-0473; Compagnie Générale des Etablissements Michelin (Michelin) v. Jorge Almeida, WIPO Case No. D2011-0147; Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484).

The disputed domain name does not feature any active content at the moment. However, there is no evidence in the record to indicate that the Respondent has used the disputed domain name or intends to use the disputed domain name in connection with a bona fide offering of goods and services distinct from the goods provided by the Complainant under the MICHELIN trademarks. As established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of respondent’s behaviour are indicative of bad faith.

Other factors which were considered by the Panel as indicative of bad faith registration and use of the disputed domain name are:

- The Respondent’s lack of response to the Complaint. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.

- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy.

- The apparent change of the content of the website after the Notification of Complaint. The change to the Respondent’s websites further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith) or V&V Supremo Foods, Inc. v. [email protected], WIPO Case No. D2006-1373.

- Any use of the disputed domain name would lead the public to the conclusion that it is, together with its connecting website, associated with the Complainant.

- Also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name. On the contrary, it appears that at some point after receiving the Complaint the Respondent contemplated the possibility to cancel or transfer the disputed domain name to the Complainant.

This Panel finds that the disputed domain name has been registered and is being used in bad faith, in accordance with the Policy. The third requirement of said Policy has been met.

7. Decision

For all 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 <michelin-anvelope.ro> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Dated: April 9, 2012