WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Shaminda Perera

Case No. D2019-1834

1. The Parties

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

The Respondent is WhoisGuard, Inc., WhoisGuard Protected, Panama / Shaminda Perera, Sri Lanka, self-represented.

2. The Domain Names and Registrar

The disputed domain names <michelincam.com>, <michelincamo.com>, <michelincamso.com> and <michelinco.com> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2019. On July 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 31, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 2, 2019 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 August 6, 2019.

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 August 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2019. A Response was filed with the Center on August 27, 2019 by Lithium Technologies.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on September 6, 2019. 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 a tire company, headquartered in Clermont-Ferrand, France. The Complainant is active in 170 countries and has 111,700 employees. The Complainant produced 187 million tires in 2016.

The Complainant is the owner of a number of registered trademarks for the word mark MICHELIN, including, but not limited to, the European Union Trademark (word mark), registration number 001791243, registered on October 24, 2001 for goods and services in classes 6, 7, 12, 17, 28 and the International trademark (word mark), registration number 771031, registered on June 11, 2001 for goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42.

The aforementioned trademarks will hereinafter be referred to together as “the Trademark”.

The Complainant is the owner of various domain names that incorporate the Trademark, including <michelin.com>, registered on December 1, 1993.

All of the Domain Names were registered on July 13, 2018. The Domain Names resolve to a page offering the Domain Names for sale (hereinafter referred to as the “Website”).

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The Domain Names are confusingly similar to the Trademark. The Domain Names reproduce the Trademark in its entirety. The Domain Names associate the Trademark with the terms “camso”, “cam”, “camo” and “co”, respectively. “Camso” is a Canadian firm, which was recently acquired by Michelin. The Domain Names are likely to be confused by Internet users as being linked to the acquisition of Michelin. Moreover, the addition of the words “cam”, “camo” or “co” are terms, which do not prevent the confusing similarity of the Domain Names with the Trademark.

The Respondent has no legitimate interest in or rights to the Domain Names. The Respondent is not a licensee of the Complainant and the Respondent is not commonly known by the Domain Names. Furthermore, the Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. Moreover, email servers have been configured on the Domain Names and therefore there might be a risk that Respondent is engaged in a phishing scheme.

The Domain Names were registered and are being used in bad faith. Complainant and its Trademark is well-known throughout the world and the Domain Names are obviously connected to the well-known Trademark. Moreover, the Trademark significantly predate the registration date of the Domain Names. The Respondent is using the Domain Names to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation or endorsement of the services offered on the Website. The Domain Names resolve towards a page offering the Domain Names for sale.

B. Respondent

The following is a summary of the Response filed by Lithium Technologies.

The Complainant is not the proprietor of any trademarks, which are entirely similar to the Domain Names. Moreover, the Domain Names do not in any way harm the Trademark or its reputation.

The Domain Names do not pretend to be related to the Complainant or its Trademark. Complainants is not commonly or internationally known by the Trademark, in addition with the terms “camso”, “cam”, “camo” or “co” at the time the Domain Names were registered.

The Domain Names are not confusingly similar to the Trademark.

The Domain Names were not registered in an attempt to attract for commercial gain, Internet users to the Website or other online location, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Website or location or of a product or service on the Website or location.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the Domain Names are 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 Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

A. Preliminary Issue: Identity of the Respondent

As an initial matter, the Panel notes that there is a question regarding the proper Respondent in this matter. The underlying registrant of the Domain Names identified by the Registrar was “Shaminda Perera”. On August 27, 2019, the Center received a Response from a company called “Lithium Technologies”, which based on the evidence in the case file and the use of the Domain Names, seems to be the beneficial holder of the Domain Names and the operator of the websites to which they resolve.

Paragraph 1 of the Rules defines the Respondent as “[…] the holder of a domain-name registration against which a complaint is initiated.” In the present case, at the point when the Complaint was filed, the holder of the Domain Names, according to the WhoIs record, was a privacy service. Upon registrar verification, the underlying registrant of the Domain Names was identified as “Shaminda Perera”. In these circumstances, Shaminda Perera would typically be regarded as the Respondent in this administrative proceeding, however, the Panel retains discretion to determine the respondent against which the case should proceed (see section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Here, the actual registrant of the Domain Names is Shaminda Perera, who presumably has the technical ability to administer the Domain Names, whereas the beneficial holder of the Domain Names is Lithium Technologies, for whom Shaminda Perera is merely acting as an agent in connection with the Domain Names.

Accordingly, both parties will collectively be referred to and treated as the “Respondent” in this matter.

B. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Names must be shown to be identical or confusingly similar to that mark.

It is not disputed that the Complainant has rights in the Trademark. This satisfies the Panel that the Complainant has established that it owns registered trademark rights in MICHELIN for the purposes of the Policy.

As set out in WIPO Overview 3.0, section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Names and the Trademark involves a relatively straightforward comparison.

In light of the foregoing, the Panel finds that the Domain Names are confusingly similar to the Trademark. The Domain Names consist of the elements “Michelin” and the terms “camso”, “cam”, “camo” and “co”, respectively. The element “Michelin” is identical to the Trademark. The elements “camso”, “cam”, “camo” and “co” relate to “Camso”, which is a Canadian firm, which was recently acquired by Michelin.

In addition, with regard to the suffix “.com” (which indicates that the Domain Names are registered in the ss“.com” generic Top-Level Domain (“gTLD”)), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name and does not give any distinctiveness.

Thus, the Panel finds that the Domain Names are confusingly similar to the Trademark.

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

C. Rights or Legitimate Interests

Having reviewed the case file and considered the submissions of the Parties, the Panel has reached the conclusions set out below.

The Respondent has failed to offer the Panel sufficient evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Names, such as:

(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “Michelin”, “Michelincam”, “Michelincamo”, “Michelincamso” or “Michelinco” is the Respondent’s name or that the Respondent is commonly known as “Michelin”, “Michelincam”, “Michelincamo”, “Michelincamso” or “Michelinco”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark.

Furthermore, the use of the Domain Names cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Names in connection with a bona fide offering of goods or services. On the contrary, offering the Domain Names for sale shortly after the acquirement by the Complainant of the Canadian company “Camso”, cannot be considered a bona fide offering of goods or services.

It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Names.

Therefore the Panel is satisfied that the second element of the Policy is met.

D. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the Domain Names have been both registered and used in bad faith by the Respondent.

In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well known throughout the world.

In the Panel’s view there is no other plausible explanation why the Respondent registered the Domain Names, other than the Respondent being aware of the Complainant and the Trademarks and to make profit by offering the Domain Names for sale. This is emphasized by the fact that the Domain Names are registered following the acquisition by the Complainant of the company Camso. This registration and use of the Domain Names is comparable to the situation which led to the decision in Perfetti S.p.A., Van Melle N.V. and Van Melle Nederland B.V. v. MIC, WIPO Case No. D2001-0400.

In general, and in accordance with WIPO Overview 3.0, the practice of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to inter alia the trademark owner. However, based on the facts of the matter, the aforementioned circumstances indicate the Respondent’s intent in registering the Domain Names was in fact to profit in some fashion from or otherwise exploit the Trademark.

In addition, and in accordance with WIPO Overview 3.0, in the Panel’s view it contributes to a finding of bad faith that the Respondent uses a privacy shield to hide its identity.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Names were registered and are being used in bad faith.

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 Domain Names <michelincam.com>, <michelincamo.com>, <michelincamso.com> and <michelinco.com> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: September 20, 2019