The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Domains By Proxy, LLC, Registration Private, United States of America (“United States”) and Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <michelinus.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2020. On January 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2020 and January 31, 2020, the Center received email communications from the Registrar confirming that the Respondent is listed as the registrant and providing the contact details.
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, and the proceedings commenced on February 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2020.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 5, 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 is a manufacture of tyres, trading on a worldwide basis. Details on extensive trademark protection of its MICHELIN trademark have been supplied to the Panel. These registrations include International Trademark Registration No. 348615 registered on July 24, 1968, and United States Registration Trademark No. 3684424, registered on September 15, 2009.
The disputed domain name was registered on August 12, 2019, and dynamically redirects to different websites including a parking page, with commercial links related to the Complainant’s business, and a page entitled “michelinus.com – Security Check” inviting the Internet users to go through a standard security check and download installation, possibly malware.
The Complainant alleges that the disputed domain name is confusingly similar to its MICHELIN trademark, containing its MICHELIN trademark in its entirety. The added suffix “us” which is the two letters International Organization for Standardization (“ISO”) country code and the two letters country code Top-Level Domain (ccTLD) abbreviation corresponding to the United States.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that there appears to be no evidence that the Respondent is known by the disputed domain name, and that the Respondent has never received permission from the Complainant to use its MICHELIN trademark in any connection whatsoever.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering commercial links to external websites.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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.
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) or ccTLD indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the “.com” indicator to be irrelevant in the circumstances of the present case, and so finds.
It has been well-established in prior decisions under the UDRP, with which the Panel agrees, that a disputed domain name which wholly contains a complainant’s well-known trademark together with the mere addition of descriptive or non distinctive elements is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the Panel considers the suffix “us”, which may stand as an abbreviation for the “United States”, is a descriptive or non distinctive element, and does not distract from the Complainant’s MICHELIN trademark, which is recognisable in the disputed domain name. The Panel, accordingly, finds that the disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark, and that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Guided by previously decisions under the UDRP in which the current Complainant has appeared as the complainant, the Panel recognises the Complainant’s MICHELIN trademark to be well known.
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel is convinced that the Complainant's MICHELIN trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds.
The Panel notes that according to the Complaint, the disputed domain name dynamically redirects to different websites including a page, with commercial links related to the Complainant, and a page entitled “michelinus.com – Security Check” inviting the Internet users to go through a standard security check and download installation, possibly malware. It is well-established in prior decisions under the Policy, with which the Panel agrees, that the use of a disputed domain name in connection with a website with connection to third party commercial websites or a website with possible downloading of malware constitutes use of the disputed domain name in bad faith. In the circumstances of the present case, the Panel feels that a finding of use in bad faith is clearly justified, and so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 <michelinus.com> be transferred to the Complainant.
George R F Souter
Sole Panelist
March 19, 2020