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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Edson Sanchez

Case No. D2013-0928

1. The Parties

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

The Respondent is Edson Sanchez of Districo Federal, Mexico, self-represented.

2. The Domain Name and Registrar

The disputed domain name <michelinllantas.com> 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 24, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2013, the Registrar transmitted by email to the Center its verification response 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2013. The Respondent did not timely submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2013. The Center received an informal email communication from the Respondent on June 24, 2013.

The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on June 28, 2013. 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 owns the trademark MICHELIN, which is largely protected around the world, to identify automobile and tire manufacturing, as well as hotel and restaurant guides and maps’ publications.

The Complainant owns and uses several domain names such as <michelin.com.mx> and <michelin.com>.

The disputed domain name was registered on March 12, 2012.

Prior to filing this procedure, the Complainant sent a cease and desist letter to the Respondent, attempting to solve the matter amicably. However, the Respondent demanded a financial compensation in order to cease the use of the disputed domain name and, therefore, the parties did not settle the matter amicably.

5. Parties’ Contentions

A. Complainant

The Complainant argues that its trademark MICHELIN enjoys a worldwide reputation and is protected by numerous trademark registrations around the world.

The Complainant states the disputed domain name is confusingly similar to the Complainant’s trademark, which has been held as “well-known” or “famous” by prior panels, as it incorporates the entirety of the MICHELIN trademark.

The Complainant further argues that the disputed domain name reproduces the entirety of the MICHELIN trademark with the addition of the generic term “llantas”, which in Spanish means “tires”. The Complainant states that such term refers to its activities and products and is consequently insufficient to avoid a finding of confusion.

The Complainant argues that the Respondent lacks rights or legitimate interests in the disputed domain name, since it has not been authorized by the Complainant to use its trademark MICHELIN and/or to register domain names. Also, the disputed domain name is so confusingly similar to the Complainant’s trademarks that the Respondent could not reasonably pretend it intended to develop a legitimate activity. The Respondent is not commonly known by the disputed domain name, or in any way affiliated with the Complainant. The Respondent did not demonstrate any use or preparation to use the disputed domain name in connection with a bona fide offering of goods or services.

Finally, the Complainant argues that the disputed domain name has been registered and is being used in bad faith, because it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name, considering that the trademark MICHELIN is well-known around the world. The reproduction of the entirety of the Complainant’s trademark with the addition of a generic term related to the Complainant’s business is further evidence of the Respondent’s bad faith registration and use of the disputed domain name. The Complainant also indicates that the Respondent has used the disputed domain name to host a website selling competing products.

B. Respondent

On June 24, 2013 the Respondent sent an email to the Center inquiring about the deadline to respond. The Respondent did not present any arguments regarding the merits of the dispute.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark, as it reproduces the entirety of the Complainant’s MICHELIN trademark. The Panel also finds that the addition of a generic term in Spanish related to the Complainant’s business (“llantas”, which means “tires” in English) is not enough to escape a finding of confusing similarity. On the contrary, it is likely to increase the possibility of confusion amongst consumers. Also, under the Policy, the addition of the “.com” generic Top-Level Domain may be disregarded when considering the issue of confusing similarity between a complainant’s trademark and a domain name.

The Panel, therefore, finds that the Complainant has established the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has alleged that the Respondent has no rights or legitimate interests in the disputed domain dame that contains in its entirety the Complainant’s MICHELIN trademark.

The Complainant has made a prima facie case in support of its allegations and, therefore, the burden of production shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy. The Respondent did not file a formal response and the email sent does not address the merits of the dispute and, therefore, the Respondent did not submit any evidence of rights or legitimate interests over the disputed domain name.

With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant has submitted evidence showing that the disputed domain name has been used in connection with a website on which orders to purchase tires from different brands can be placed . This is not bona fide pursuant to UDRP jurisprudence (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.

With respect to paragraph 4(c)(iii) of the Policy, there is no evidence that the Respondent has made or is making a legitimate noncommercial or fair use of the disputed domain name. At the time of this Decision, the disputed domain name was and is used to host a website on which orders to purchase tires from different brands can be placed. This is not a legitimate noncommercial or fair use of the disputed domain name and customers seeking the Complainant’s services may be led to believe that such website is related to the Complainant.

In view of the above, the Panel finds that the Complainant has established the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent has intentionally registered the disputed domain name, which reproduces the Complainant’s famous trademark MICHELIN together with a generic term related to its business. By the time the disputed domain name was registered, it is unlikely that the Respondent did not have knowledge of the Complainant’s rights in the trademark MICHELIN.

The Complainant’s allegations of bad faith are not contested. The evidence provided by the Complainant confirms that it had long been using its MICHELIN registered trademark when the disputed domain name was registered. The Panel finds that the Respondent must have been aware of the Complainant’s rights in the trademark when it registered the disputed domain name. The Panel finds that the evidence showing that the disputed domain name was used as a website on which orders to purchase tires from different brands can be placed is sufficient for a finding of bad faith registration and use of the disputed domain name in this case.

Also, under paragraph 4(b)(iv) of the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” This Panel finds this to be the case here.

In light of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Complainant has established the third element of paragraph 4(a) 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 <michelinllantas.com> be transferred to the Complainant.

Luiz E. Montaury Pimenta
Sole Panelist
Date: July 15, 2013

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