Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Oncu, Ibrahim Gonullu of Istanbul, Turkey.
The disputed domain name <michelinbayi.com> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 18, 2014. On July 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 12, 2014.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on August 20, 2014. 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.
Complainant is the owner of registrations for the trademark MICHELIN. The date of the earliest registration attached to the Complaint is June 11, 2001. These registrations cover dozens of countries throughout the world, including Turkey.
The disputed domain name was registered on March 16, 2012, well after Complainant's trademark was registered.
Complainant asserts that it owns the trademark MICHELIN, protected throughout the world in connection with the automobile and tire manufacturing industries, as well as in connection with hotel and restaurant guides and maps publications. Complainant asserts that it has a definite and undisputable reputation in the automotive industry and in French gastronomy. Complainant has marketing operations in more than 170 countries and employed over 111,000 employees as of the end of 2013.
Complainant asserts that it communicates with its customers and the public on the Internet to promote its products and services, by its websites "www.michelin.com" and "www.michelin.com.tr". Complainant asserts that it is present all over the world, including in Turkey where Respondent is located.
Complainant asserts that it has been a participant in the Turkish tire market beginning in 1936, and since that time has had a wide range of distribution in the field of automobile tires in Turkey.
Complainant asserts that it sent a cease-and-desist letter to Respondent on July 30, 2012, requesting Respondent to cease use of the disputed domain name and cancel it. Respondent never replied to Complainant's letter despite several consecutive reminders. However, the Registrar deactivated Respondent's website, which previously displayed commercial links related to Complainant and its competitors.
Complainant asserts that the disputed domain name is identical or at least confusingly similar to Complainant's MICHELIN trademark. The disputed domain name <michelinbayi.com> combines Complainant's MICHELIN trademark with the term "bayi", which means "dealers" in Turkish. Complainant asserts that the disputed domain name substantially reproduces Complainant's trademark in its entirety, which previous panels have considered to be well-known or famous.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name because Respondent is not affiliated with Complainant, has not been authorized by Complainant to use and register a trademark, and has not sought registration of any domain name incorporating said mark. Complainant asserts that its MICHELIN trademark was registered years before the disputed domain name was registered, and is so identical to Complainant's MICHELIN trademark that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
Complainant asserts that Respondent is not commonly known by the name "Michelin", is not affiliated with Complainant, is not authorized or licensed to use the MICHELIN trademark, or to seek registration of any domain name incorporating the mark. Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. As the disputed domain name resolved to a parking page with pay-per-click links likely to generate revenues, Complainant asserts that it cannot be inferred that Respondent was making a legitimate noncommercial or fair use of the disputed domain name. Complainant asserts that Respondent made no attempt to demonstrate why it registered the disputed domain name identical to Complainant's trademarks and domain names, nor did Respondent ever answer to Complainant's cease-and-desist letter to contest Complainant's rights or to assert the legitimacy of Respondent's registration and use of the disputed domain name.
Complainant asserts that the disputed domain name was registered and is being used in bad faith because it is impossible that Respondent was unaware of Complainant's trademark and its worldwide reputation. Complainant asserts that it is opportunistic bad faith for one such as Respondent, who has no connection with a well-known trademark, to incorporate that mark in a domain name. Complainant asserts that because the disputed domain name reproduces Complainant's MICHELIN trademark in its entirety, this demonstrates a blatant knowledge of Complainant's trademark as of the date the disputed domain name was registered. Complainant asserts that the combination of its MICHELIN trademark with the Turkish word for "dealers" cannot have been mere coincidence. Furthermore, Complainant asserts that Respondent's failure to respond to Complainant's cease-and-desist letter or any of its reminders merits an inference of bad faith.
Complainant asserts that the disputed domain name was used in bad faith because the disputed domain name resolved to a parking page displaying commercial links related to Complainant and its competitors, taking undue advantage of Complainant's well-known trademark to generate profits.
Complainant asserts the fact that the disputed domain name is currently inactive does not mean that the disputed domain name is being used in good faith. Rather, Complainant asserts that passive holding does not preclude a finding of bad faith and that the other circumstances of Respondent's behavior compel the conclusion that Respondent is acting in bad faith despite the fact that its webpage is currently inactive.
Finally, Complainant asserts that Respondent registered the disputed domain name to prevent Complainant from using its trademarks in the disputed domain name, constituting evidence of Respondent's bad faith.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
The Policy, paragraph 4(b), states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
These circumstances are non-exclusive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
Respondent may demonstrate rights in or legitimate interests to the disputed domain name by any of the following, without limitation (Policy, paragraph 4(c)):
(i) Before any notice to you of the dispute, your use of, or demonstrable preparations 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; or
(ii) you, as an individual, business, or other organization have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Where, as here, Respondent is in default, the Panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).
The Panel finds that the disputed domain name <michelinbayi.com> is confusingly similar to Complainant's registered trademark MICHELIN. Rather than serving to distinguish Respondent's domain name from Complainant's trademark, adding the generic term "bayi" ("dealers") to the registered term MICHELIN is likely to lead Internet users to believe that they are accessing a website of dealers for Complainant's MICHELIN products. Adding the generic term "bayi" to Complainant's trademark does not avoid the confusing similarity between the disputed domain name and the mark. SeeVolkswagen Group of America, Inc. v. Moniker Privacy Services / Mainstream Advertising, Nathan Joseph, WIPO Case No. D2014-0528.
The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.
There is no evidence that Complainant has licensed or authorized Respondent to use Complainant's trademark, or that Respondent has any authorized relationship with Complainant or otherwise has permission to register any domain name incorporating Complainant's trademark. There is no evidence that Respondent's use of the disputed domain name has ever been in connection with a bona fide offering of goods or services or that Respondent has made a legitimate noncommercial or fair use of the disputed domain name. Respondent does not appear to be commonly known by the disputed domain name.
As a result, Complainant has established paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainant has provided sufficient evidence satisfying paragraph 4(b)(iv) of the Policy, namely that by using the disputed domain name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's website.
From Respondent's default in this proceeding, its combination of Complainant's well-known trademark with the word "bayi" ("dealers"), its failure to respond to Complainant's cease-and-desist correspondence, and the facts that the website linked to the disputed domain name included pay-per-click links related to Complainant and its competitors, this Panel draws an inference that Respondent must have been aware of Complainant's well-known trademark and intended to divert Internet users seeking information about Complainant or its dealers, in order to receive pay-per-click revenue.
The fact that the disputed domain name currently resolves to an inactive webpage does not prevent this Panel from concluding that the disputed domain name was registered and used in bad faith. The consensus of panelist views on this issue is as follows:
The apparent lack of so-called active use (e.g., to resolve to a website) of the disputed domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Examining all the circumstances of this case, the Panel finds nearly all the exemplary circumstances indicative of bad faith, and more: Complainant having a well-known trademark, Respondent having responded neither to the Complaint nor to Complainant's correspondence, and parking of the disputed domain name with the generation of incidental revenue from pay-per-click links. The mere fact that the website was inactivated after receipt of Complainant's cease and desist letter does not prevent this Panel from finding that the disputed domain name is being used in bad faith.
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, <michelinbayi.com>, be transferred to Complainant.
Jordan S. Weinstein
Sole Panelist
Date: August 27, 2014